[00:00:02] Speaker 00: Case number 14-7126, Seed Company Limited at L, Appellates, versus Angie Westerman as the personal representative of the estate of William F. Westerman at L. Mr. Mickeljohn for the appellates. [00:00:14] Speaker 00: Mr. Robinson for Westerman Appellees at L, and Mr. Gloss for Kratz Appellees at L. [00:01:31] Speaker 03: Good morning. [00:01:31] Speaker 03: Good morning, Your Honor. [00:01:33] Speaker 03: May it please the court? [00:01:34] Speaker 03: The decision below with respect to duty of care and judgmental immunity is wrong for three independent reasons, and that should be reversed. [00:01:44] Speaker 03: First, the biomech case requires that there be three elements proven by the defendant who's asserting this defense. [00:01:55] Speaker 03: The first element is that there is a judgment made. [00:01:59] Speaker 03: Second element is that it's an informed judgment, and third, it's got to be a reasonable judgment. [00:02:07] Speaker 03: The essence of the case is that if our client seed had proven entitlement to the filing date of the PCT application, it would have won the interference. [00:02:19] Speaker 03: It's called a priority determination. [00:02:21] Speaker 03: It didn't win that filing date and therefore lost the interference. [00:02:26] Speaker 03: So the question is what was the malpractice? [00:02:29] Speaker 03: The malpractice was failing to failure to follow the interference rules. [00:02:34] Speaker 03: Interference rule was 37 CFR section 1.637 and 1.647. [00:02:40] Speaker 03: Now 637 says you have to file a certified translation of the earlier filed application you're trying to get the benefit of if it's in a foreign language. [00:02:54] Speaker 03: Why certified? [00:02:55] Speaker 03: The board has to know it's correct and so does your opponent because they both want to review that translation to see if the invention that's in the later filed application is disclosed in the earlier filed application. [00:03:11] Speaker 03: The defendants below failed to do that. [00:03:14] Speaker 03: They didn't file the certified translation. [00:03:16] Speaker 03: They didn't comply with that 1.637, and therefore the board held against them, both originally and on reconsideration, and so did the Federal Circuit originally count on reconsideration. [00:03:31] Speaker 03: So the question is, was there a judgment made or not? [00:03:35] Speaker 03: Well, the attorneys now in their briefs before this court say, yeah, there was a judgment because we thought that the PCP application was not an earlier filed application. [00:03:50] Speaker 03: And remember, 637 says three times, if you have an earlier filed application in a foreign language, you have to file a translation. [00:03:59] Speaker 03: So they're saying it's not an earlier file translation. [00:04:02] Speaker 03: And if you look at the Westerman brief on page 20 to 23, there's two sections of the brief which say exactly that. [00:04:10] Speaker 03: PCP is not an earlier file translation. [00:04:13] Speaker 03: On page 20, it's in the heading itself. [00:04:15] Speaker 03: And later on down in the page, it says the same thing. [00:04:18] Speaker 03: But look at the actual evidence as opposed to attorney argument. [00:04:23] Speaker 03: The evidence is, [00:04:24] Speaker 03: What did the defendants below say when they filed the motion to get the benefit of the filing date of the PCP application? [00:04:34] Speaker 03: What they said, that's at 951 and 952 of the record, they called it a motion to be accorded the benefit of the filing date of earlier filed applications. [00:04:45] Speaker 03: There was a Japanese application. [00:04:47] Speaker 03: then there was a PCT application, which was also in Japanese. [00:04:51] Speaker 03: So the title says applications, that means both. [00:04:55] Speaker 03: They're designating these things as earlier filed applications, which means that 637 has to be followed. [00:05:02] Speaker 03: And if there's any doubt about it, in the text where they're talking about the PCT application, [00:05:08] Speaker 03: They say the party to mine, let's see, also moves to be accorded the benefits of the filing date of the earlier filed PCP application. [00:05:18] Speaker 03: So what they said in 97 was the PCP application was an earlier filed application. [00:05:26] Speaker 03: What they say in their brief, what's been briefed at 20 to 23, is that it wasn't. [00:05:31] Speaker 03: And the reason they have to say that is because if it was an earlier filed application, then they had to comply with 637 and they didn't. [00:05:40] Speaker 03: So there was no judgment here. [00:05:42] Speaker 03: It was a mistake. [00:05:43] Speaker 03: It was simply a failure to put in what they had put in, and the board and the Federal Circuit ruled against them for that purpose. [00:05:52] Speaker 03: The only other evidence in the record about this is the declaration of Ray Lupo. [00:05:59] Speaker 03: He's an expert for seed, and he talks about the standard of care in a [00:06:07] Speaker 03: in a malpractice case. [00:06:09] Speaker 03: His declaration's in 1364 to 1407 of the record. [00:06:14] Speaker 03: It's fairly detailed. [00:06:16] Speaker 03: But what Mr. Lupo says is what the standard is. [00:06:20] Speaker 03: Someone practicing interference, and by the way, that's a very complicated area of the law, very complicated proceedings. [00:06:28] Speaker 03: Someone practicing in that area has to first of all know the rules. [00:06:31] Speaker 03: They have to read the rules. [00:06:33] Speaker 03: Secondly, they have to apply the rules. [00:06:36] Speaker 03: If 637 says you need certified translations of earlier filed applications, you have to file such translations. [00:06:47] Speaker 03: And he also talks about breach at sections. [00:06:50] Speaker 05: I guess both sides would agree on this, but it seems brutal that the failure to file a certified translation balances your rights, but that's neither here nor there. [00:06:59] Speaker 05: Seems brutal in the sense that any... But your point is that, because it's brutal, they should have known. [00:07:06] Speaker 03: Yeah, there's a lot of rules that are sort of brutal. [00:07:09] Speaker 03: Yeah, we have a few. [00:07:10] Speaker 03: Such limitations as brutal and discovery, termination is sometimes brutal. [00:07:16] Speaker 03: A lot of stuff like that. [00:07:17] Speaker 03: But what's important is not that it's just some rule that was made up and has no importance. [00:07:24] Speaker 03: It has a lot of importance. [00:07:26] Speaker 03: You have to... [00:07:27] Speaker 03: file that translation, and it's gotta be certified, so you have to know it's accurate, so that both the opposing party, Stevens in this case, and the board, can see if that, in that translation, if the invention of the later filed application is disclosed in the first file. [00:07:45] Speaker 05: So now, if you were correct on all this, our proper approach here would be to send, we have to get the statute of limitations, I mean, do statute of limitations, [00:07:57] Speaker 05: the proper approach on this point would be to send it back for trial. [00:08:02] Speaker 05: I don't think so, Your Honor. [00:08:04] Speaker 05: I mean, I think you're going for the whole whole thing. [00:08:06] Speaker 03: I think so because the whole issue is whether they thought it was not an earlier file application at the time. [00:08:15] Speaker 03: whether the defendant thought it was not an earlier filed application. [00:08:19] Speaker 03: And I don't see how you can get, how a reasonable jury could decide when they're calling it an earlier filed application twice, how that reasonable jury could say, oh, [00:08:30] Speaker 03: They made a mistake. [00:08:32] Speaker 03: Now, if there was a declaration in the case, in our case, that said, gee, we said that at the time, but we made a mistake. [00:08:40] Speaker 03: We didn't mean to say it was an earlier file application. [00:08:44] Speaker 03: We meant to say it's a PCT application, and for that reason, you don't have to file a certified translation. [00:08:50] Speaker 03: They didn't do that. [00:08:51] Speaker 03: No declaration, and they should be stuck by their words, I think. [00:08:55] Speaker 03: Do you want to deal with the statute of limitations now? [00:08:58] Speaker 03: I've got a little more on this. [00:08:59] Speaker 03: There's two other issues. [00:09:01] Speaker 00: OK. [00:09:01] Speaker 03: Go ahead. [00:09:02] Speaker 03: So Biomech also requires that there be an informed judgment. [00:09:05] Speaker 03: That is, in the Finnegan-Henderson case, Finnegan-Henderson did a lot of research. [00:09:11] Speaker 03: They had drafts. [00:09:12] Speaker 03: Sometimes they went one option. [00:09:14] Speaker 03: Sometimes another option. [00:09:15] Speaker 03: They clearly made a judgment. [00:09:17] Speaker 03: And it was clearly informed. [00:09:19] Speaker 03: In this case, there's nothing to indicate that it was informed. [00:09:23] Speaker 03: They didn't take the two options and study them and have legal research and say, research on why I have to file the translation or why I don't have to file the declaration. [00:09:36] Speaker 03: There's no letter to the client saying, here's the two options, here's the one we want to pick. [00:09:40] Speaker 03: Nothing of that. [00:09:41] Speaker 03: They bear the burden on this affirmative defense, and there's no evidence on it. [00:09:45] Speaker 03: And for that reason, also, independently, I think the decision should be reversed. [00:09:51] Speaker 03: And finally, the reasonableness of the decision. [00:09:54] Speaker 03: All cases in this court talk about attorney's judgment having to be reasonable. [00:10:02] Speaker 03: This was not a reasonable decision. [00:10:04] Speaker 03: There's two ways to go. [00:10:05] Speaker 03: File the translation or don't file the translation. [00:10:08] Speaker 03: If you file the translation, there's no risk at all to the client. [00:10:12] Speaker 03: You've complied with the interference rules, which you should have complied with. [00:10:15] Speaker 03: You've complied with this other PCT rules that they're sort of making up now in their briefing. [00:10:21] Speaker 03: No risk. [00:10:23] Speaker 03: But if you don't file the certified translation, [00:10:26] Speaker 03: You're okay so long as these PCP rules that are newly invented are relied upon by the board. [00:10:36] Speaker 03: But if the board says you should have filed a certified translation of an earlier filed application and you didn't, then it's risk to the client. [00:10:45] Speaker 03: Decision was not a reasonable one. [00:10:48] Speaker 03: Just say a couple words about the Stevens against Mai Federal Circuit decision. [00:10:55] Speaker 03: They say it's a novel decision. [00:10:57] Speaker 03: It sort of resolved all the conflicts that were out there with respect to these rules. [00:11:01] Speaker 03: There's no conflicts with respect to these rules. [00:11:05] Speaker 03: As a matter of fact, the Federal Circuit said, [00:11:07] Speaker 03: The conflict that the defendants here suggest simply does not exist. [00:11:12] Speaker 03: That's on page 1332 of the Federal Circuit ruling. [00:11:16] Speaker 03: And they then explain the differences between the rules with respect to filing a translation in the PCT, which is ex-party practice, and filing a translation in interference, which is inter-party practice. [00:11:29] Speaker 03: There are two different rules, two different purposes. [00:11:34] Speaker 03: One is to, in the PCT, you have to file a translation because it's a requirement of the Paris Convention Treaty. [00:11:44] Speaker 03: All these countries that are part of that treaty [00:11:47] Speaker 03: have this requirement. [00:11:49] Speaker 03: With respect to the interference rules, you have to file a translation, plus it's got to be certified, whereas with the PCP it doesn't have to be certified, and you have to prove what's called a constructive reduction of practice using that certified translation in order to get the benefit of the earlier filing date. [00:12:06] Speaker 03: Constructive reduction of practice means simply that the disclosure of the [00:12:11] Speaker 03: Planes are trying to get in the US application can be found in the such the Federal Circuit decision. [00:12:18] Speaker 01: So you just invoked it that Can you get to stature limits with respect to the Federal Circuit decision? [00:12:24] Speaker 01: Because the argument that could be made is that well, then that put everybody on notice Yeah, and in particular talk about the crats Apple ease the crats the crats So [00:12:44] Speaker 03: First of all, we don't think that the issue or the case be accrued until the board ruled. [00:12:56] Speaker 03: And we have evidence that the Krats and the Westman defendants believe that also. [00:13:05] Speaker 03: For example, with respect to the Krats defendants, we have a letter from Krats. [00:13:13] Speaker 03: 6659 in the record. [00:13:18] Speaker 03: And it's a letter from Kratz to us. [00:13:21] Speaker 03: And one of the attorneys from Kratz firm was James Armstrong. [00:13:25] Speaker 03: And he says the damage occurred, according to the insurance company letter, when the Federal Circuit denied rehearing on May 18th. [00:13:34] Speaker 03: That's when [00:13:36] Speaker 03: He is saying that the damage occurred May 18th, not when the Federal Circuit decision came down, but when the petition for re-agreement came down. [00:13:51] Speaker 03: Or perhaps it was even October 18, 2004, when the petition for certiorari was denied. [00:13:58] Speaker 03: So Kratz is telling us that's when the action accrued. [00:14:05] Speaker 03: And the Westerman defendants, in a letter dated September 29, 2004, this is at 2242 in the record, [00:14:16] Speaker 03: says this to the insurance barrier. [00:14:21] Speaker 03: Just recently on September 20, 2004, this is way within the period for being protected by the statute, the patent office issued a decision on the request to reopen the case of the patent office who are denied. [00:14:34] Speaker 03: We believe this denial could reasonably be expected to bring rise to a claim against our firm and our predecessors. [00:14:44] Speaker 03: That's crack. [00:14:45] Speaker 03: So both Kratz and Westermann put the same position as we did prior to the litigation as to when the claim improved. [00:14:54] Speaker 03: Not exactly the same dates, but they're all well within the statute. [00:14:57] Speaker 03: Secondly, the Kratz, the Westermann lawyers sent us a letter saying, this is way after [00:15:10] Speaker 03: a Federal Circuit decision saying you're still a winner. [00:15:13] Speaker 03: You're a wicked seed. [00:15:15] Speaker 03: You're still a winner until the board rules. [00:15:17] Speaker 03: Because what happens in this interference is first you have ex-party prosecution before the patent office. [00:15:23] Speaker 03: Secondly, you have the interference. [00:15:25] Speaker 03: And the interference is sort of a two-step process. [00:15:27] Speaker 03: You have the interference, the final decision, then you go to the Federal Circuit. [00:15:31] Speaker 03: And then you come back and you have some additional argument before the board. [00:15:37] Speaker 03: Now, our client was a winner up until the Federal Circuit ruled, but even after that, according to the Board, it was still a winner until they finalized the decision, until it was absolutely final on September 14, 2004. [00:15:55] Speaker 03: I'd like to reserve a little time here. [00:15:57] Speaker 05: I'll rebuttal if I could. [00:16:14] Speaker 02: May it please the court. [00:16:15] Speaker 02: My name is Lance Robinson, and I represent the Westerman Appellees. [00:16:20] Speaker 02: Before addressing these substantive malpractice issues, I wanted to quickly address the threshold issue that we raised in our motion to dismiss, which is whether Mr. Edward Kinehan and the Westerman law firm are appropriate parties to this appeal. [00:16:32] Speaker 02: The only cause of action against them in the amending complaint was Count 2, and the court below conceded that Count 2 had no damages associated with it. [00:16:41] Speaker 02: so there is no remaining claim or controversy against Mr. Keenahan and the Westerman firm. [00:16:47] Speaker 02: So there's no basis to include them in the appeal. [00:16:49] Speaker 02: Unless there's any questions on that, I'd like to move to address the Substance Malpractice Claims. [00:16:57] Speaker 02: The authorities in 1997 were perfectly clear on whether a PCT application, the filing date was the filing date for all legal purposes. [00:17:08] Speaker 02: The issue is whether a U.S. [00:17:09] Speaker 02: national stage application, whether that entry date is the entry date, or whether the filing date for the U.S. [00:17:17] Speaker 02: national stage application is the filing date of the PCT application. [00:17:21] Speaker 02: And 35 USC 363 states, an international application designated to the United States shall, not may, shall have the effect from its international filing date under Article 11 of the treaty. [00:17:37] Speaker 02: The Manual of Patent Examination Procedures that interpreted what 35 USC 363 said explained further. [00:17:46] Speaker 02: That stated differently, since the international application, meaning a PCT application, is not an earlier application, it has the same filing date as a national stage. [00:17:56] Speaker 02: A priority claim in the national stage to the international application is inappropriate. [00:18:02] Speaker 02: Paragraph B of that same MPEP section states, [00:18:06] Speaker 02: An international application designated the U.S. [00:18:08] Speaker 02: has two stages, international and national, with the filing date being the same in both stages. [00:18:15] Speaker 02: Later on, it says, for all legal purposes, the filing date referring to the U.S. [00:18:19] Speaker 02: national stage application is the PCT international filing date. [00:18:25] Speaker 02: All of the authorities available in 1997 plainly stated that the filing date of the PCT application was the filing date of the U.S. [00:18:34] Speaker 02: national stage application for all legal purposes. [00:18:38] Speaker 02: Nothing indicated that there was an exception for interferences. [00:18:43] Speaker 02: And on this field, Your Honor, they barged in. [00:18:44] Speaker 05: What do you do with the Federal Circuit decision's description? [00:18:47] Speaker 02: The Federal Circuit's decision? [00:18:50] Speaker 05: Well, that's in 2004, Your Honor, and so in 1997, the Senate... I understand, but they're looking back at the same, at the rules, talking about them. [00:18:58] Speaker 02: Correct, Your Honor, and I'm not sure how the Federal Circuit got to there, because in order to get there, you have to interpret child has really meaning may, and you have to carve out an exception for interferences that's simply not there. [00:19:11] Speaker 02: And what's further supported by that, Your Honor, is the interference regulations themselves. [00:19:15] Speaker 02: And in 37 CFR 1.601H, that's the interference regulation that defines what filing date means. [00:19:23] Speaker 02: And that says that in the case of an application, filing date means the filing date assigned to the application. [00:19:30] Speaker 02: So what the interference rule is saying is you've got to look at what the filing date that's assigned to the application is. [00:19:35] Speaker 02: and what all the other authorities that I just read all explain what the filing date that's assigned to the application should be. [00:19:42] Speaker 01: So when the board issued its opinion, there was some back and forth between Westerman and the client to the effect that we ought to get this reconsidered? [00:19:52] Speaker 01: Yes, Your Honor, and more. [00:19:53] Speaker 01: If everything was so clear, as you're suggesting, then what was the impetus behind needing to get it reconsidered? [00:20:01] Speaker 02: What drove the reconsideration is that the board's decision, it denied them the filing date of the PCT application, but granted them the filing date of the Japanese patent application. [00:20:12] Speaker 02: And there was more than one year of space between the Japanese patent application and the US national stage. [00:20:17] Speaker 02: And so there was concern that the board's ruling would break the changes. [00:20:20] Speaker 05: Yeah, you knew you were in trouble with that, right? [00:20:22] Speaker 02: Correct. [00:20:22] Speaker 02: The clients were troubled by that. [00:20:23] Speaker 02: And that's what led to the motion for reconsideration. [00:20:25] Speaker 02: They were trying to correct this issue about Peek not receiving the filing date of the PCT application. [00:20:31] Speaker 02: And Your Honor, to further address your point about if this is so clear, I mean, the NPEJU rules, the manual of patent examination procedures, talk about this confusion between the filing date and the entry date. [00:20:43] Speaker 02: And it's a confusing issue because in some sense they are two separate applications, but what the rules say is that it is legally considered one application with one filing date. [00:20:53] Speaker 02: And in 2004, the Federal Circuit, that's the first time that the Federal Circuit has squarely addressed this issue. [00:20:59] Speaker 02: Before that, if you're looking at the authorities available in 1997, there's simply no indication that an interference that the board has any discretion in using a different filing date other than the filing date of the PCT application. [00:21:11] Speaker 01: So the manual that you're referring to, it has an entry about interferences. [00:21:18] Speaker 01: That's correct, Your Honor. [00:21:19] Speaker 01: And under that one, doesn't it say that you're supposed to file the translation? [00:21:23] Speaker 02: not for international applications. [00:21:25] Speaker 02: No, Your Honor, those provisions do not address PCT applications. [00:21:33] Speaker 05: When the Federal Circuit finally does confront it, though, they do say that the rules are clear. [00:21:39] Speaker 02: They do, Your Honor, and that's the first time, and with all due respect to the Federal Circuit. [00:21:43] Speaker 05: I guess the point there, and maybe I have to think through this, but the point is when they see it and they say it's very clear, [00:21:52] Speaker 05: And you have arguments about, well, it wasn't so clear. [00:21:56] Speaker 05: All this suggests to me that it's not a summary judgment case. [00:21:59] Speaker 05: Well, Governor, I think it is summary judgment, because there was, you got the rules on, talking about what was reasonable to be done in terms of filing the translation, given the standard of care, et cetera. [00:22:11] Speaker 05: and that's usually a jury issue, it would suggest, okay, there's on the one hand you have these rules which were deemed by another court to be clear, could be read. [00:22:22] Speaker 05: On the other hand, you have the things you're pointing out, the manual, let that be sorted out by the jury. [00:22:28] Speaker 02: Your Honor, before the Federal Circuit's decision in 2004, there's simply nothing in 1997 which would indicate that the Federal Circuit would come out that way. [00:22:36] Speaker 02: If you're looking at the plain language of the rules. [00:22:38] Speaker 05: The rules themselves, from the Federal Circuit's perspective, would have so indicated. [00:22:43] Speaker 02: And the Federal Circuit's that language on there about being clear. [00:22:46] Speaker 02: That's dicta. [00:22:47] Speaker 02: They weren't addressing, are they clear for malpractice purposes? [00:22:51] Speaker 02: But again, how does the Federal Circuit get there? [00:22:53] Speaker 02: And if you've got a rule that says that the filing date shall have effect, [00:22:58] Speaker 02: The federal court has to say, well, that really means may. [00:23:00] Speaker 02: And if you're looking at the MTE provisions, it says for all legal purposes, not for all legal purposes except for interferences. [00:23:07] Speaker 02: There's simply nothing in 1997 that a reasonable attorney could look at and say, wow, I've got to take these extra steps to be entitled to the filing date of the PCT application. [00:23:17] Speaker 02: And part of the reason for that, Your Honor, is that the US entry, the 183 application, that is an English translation of the PCT application. [00:23:26] Speaker 02: They've already filed that. [00:23:27] Speaker 05: Right, but that's not the right one. [00:23:29] Speaker 05: I mean, that's the problem. [00:23:31] Speaker 02: That is the right one. [00:23:31] Speaker 05: That is word for word. [00:23:32] Speaker 05: It's not the right proceeding. [00:23:35] Speaker 02: That's the whole case, right? [00:23:39] Speaker 02: In the interference, though, they are looking at the 183 application. [00:23:42] Speaker 02: I mean, eight pages of the 2002 board decision is spent discussing the 183 application, which is an English translation of the PCT application. [00:23:50] Speaker 02: I mean, what they're really saying, what the Federal Circuit really held for the first time, is that, no, you've got to supply a second English translation of a PCT application, even though they've already filed one, and even though the PTO has already accepted that, Your Honor. [00:24:03] Speaker 01: How do you know if you don't, that the PCT application is the same as the 183? [00:24:08] Speaker 02: That's in the, when they filed the 183 application, they had to certify that this was an English translation of the PCT application. [00:24:18] Speaker 01: When they file the 183? [00:24:20] Speaker 02: When they file the 183 application in the US. [00:24:22] Speaker 02: Because that is what, when you've got a PCT application that designates the United States, when you file that national stage, it has to be in English translation of the PCT application. [00:24:36] Speaker 02: And so, Your Honor, because SEED can't point to any evidence in 1997, which suggests that a regional attorney would think that the filing date of the PCT application was not the filing date, there's simply, there's no, what would a jury be looking at in 1997? [00:24:49] Speaker 02: There's no other authority for them to consider in 1997, which would indicate an opposite result. [00:24:56] Speaker 02: The first and only indications that we have that PCT applications filing date is not the filing date is the board decision in 2002 and the Federal Circuit's decision in 2004. [00:25:04] Speaker 05: They'll be the rules themselves, right? [00:25:08] Speaker 02: The rules themselves, 1.637 and 1.647 apply to an earlier filed application. [00:25:14] Speaker 02: And what the MPEP provisions in 35 U.S.C. [00:25:18] Speaker 02: 363 explain is that these are not two different applications. [00:25:22] Speaker 02: These are two stages of a single application. [00:25:26] Speaker 02: So there would be no reason to think that 1.637 and 1.647 apply to that. [00:25:32] Speaker 01: And Your Honor, this also gets back to you. [00:25:34] Speaker 01: I thought in your own filings, you characterized the PCT application as an earlier filed application, which seemed to come within the crosshairs of the rule. [00:25:44] Speaker 02: They did refer to that as an earlier filed application in the motion. [00:25:48] Speaker 02: And the motion doesn't cite to the MPE provisions and 35 U.S.C. [00:25:51] Speaker 02: 363 that we're talking about. [00:25:54] Speaker 02: But what that motion demonstrates, though, is that they're aware of the rule. [00:25:57] Speaker 02: Because remember, in that motion, they provide a certified English translation of the Japanese patent application. [00:26:03] Speaker 02: And in the very same motion, they don't provide a certified English translation of the PCT application. [00:26:09] Speaker 02: That is, by definition, an exercise of professional judgment. [00:26:14] Speaker 02: This is not a case of neglect, error. [00:26:16] Speaker 02: We didn't know about the rule. [00:26:18] Speaker 02: They knew about the rule, and they thought that it didn't apply to PCT applications. [00:26:23] Speaker 02: And that decision was perfectly consistent with the authorities as it existed in 1997. [00:26:27] Speaker 02: I seem about to run out of time. [00:26:32] Speaker 02: If I could quickly address the continuous representation issue. [00:26:38] Speaker 02: So the issue here is whether the continuous representation rule applies to appeals. [00:26:43] Speaker 02: And the case in RDH v. Winston doesn't directly address the issue, but there's a remand there. [00:26:49] Speaker 02: And the remand is difficult, you can't explain it unless the court had decided that the continuous representation rule doesn't apply to appeal. [00:26:58] Speaker 02: The dates there are the appeal terminated in March of 1994, and the parties filed the complaint in August of 1995. [00:27:06] Speaker 05: Just on the policy of the whole thing, wouldn't it make sense to [00:27:10] Speaker 05: You have a continuous representation rule to extend it through appeals on the theory that if you're going to win on appeal, maybe the thing you're concerned about gets corrected on appeal. [00:27:21] Speaker 02: I don't think you've got the same policy considerations because the appeals do represent a natural pause in litigation. [00:27:27] Speaker 02: And unlike in middle discovery in the middle of trial, it's easier to obtain different counsel. [00:27:33] Speaker 02: And on the flip side of the policy issues, you've got a case like this. [00:27:36] Speaker 02: We're dealing with a malpractice that allegedly occurred in 1997. [00:27:42] Speaker 02: We've had law firms no longer exist that were initially involved. [00:27:45] Speaker 02: Two of the key witnesses in this case have died. [00:27:48] Speaker 02: Memories have faded. [00:27:49] Speaker 02: Our clients were, you know, they were deposed 16 years after it occurred and said, well, we can't remember exactly what we did back in 1997. [00:27:55] Speaker 02: And now CEDA's claiming, well, that lack of evidence, that's proof of guilt. [00:27:59] Speaker 02: That is incredibly unfair to have to deal with these claims that are brought, that deal with events that occurred that long ago. [00:28:08] Speaker 02: And that's exactly why statute of limitations exist. [00:28:12] Speaker 05: And that doesn't really go. [00:28:13] Speaker 05: The three-year, the continuous representation rule, though, doesn't really affect all the period of time you're talking about. [00:28:20] Speaker 02: It shows that it's possible what happens. [00:28:23] Speaker 02: And even if you're dealing with a lesser time period, that's still a very long time period, because appeals [00:28:29] Speaker 02: in terms of appeals can take much longer than the parties anticipate. [00:28:33] Speaker 01: I mean, it sounds like what you're saying is it ought to end at some point. [00:28:36] Speaker 01: Appeals is like a handy point to end it, but it doesn't really address, which may be true as a countering matter, but it doesn't address the justifications for the continuous representation rule to begin with, which seem equally applicable to counsel who continues to represent somebody on appeal. [00:28:52] Speaker 01: Nothing's changed in the dynamic between the client and the counsel that [00:28:56] Speaker 01: would cause one to think, well, there's a breaking point at the point in time at which the appeal statement. [00:29:02] Speaker 02: I think there is more of a breaking point when it comes to appeals than it is if you're in the middle of litigation or in the middle of trial. [00:29:10] Speaker 02: I think it's much more common for parties to retain new counsel, and in this case, Your Honor, they actually went with a different law firm. [00:29:16] Speaker 01: It may be true that it's more natural to switch counsel on appeal, but I guess the continuous representation rule doesn't seem to rest on the question of how easy would it be to switch counsel. [00:29:28] Speaker 01: That doesn't seem to be the driving policy behind the rule. [00:29:32] Speaker 02: It's a policy of kind of forcing a client, do I sue my lawyer now, or do I wait until the litigation process is further along? [00:29:41] Speaker 02: And again, I think that the trials there, it's a more natural breaking point. [00:29:44] Speaker 02: And the counterbalance is just that appeals have the potential to last so long. [00:29:50] Speaker 05: Right, it could go longer than the three years, certainly. [00:29:53] Speaker 02: Go much longer than three years, right. [00:29:55] Speaker 05: Of course, in this case, though, then it continues on after the appeal, as often happens. [00:30:00] Speaker 05: And one of the problems with cutting the line or drawing the line is that you're forcing a decision to sue the lawyer before everything's transpired that may have caused you not to sue the lawyer. [00:30:16] Speaker 02: That's true, Your Honor, but that's not always going to be true, because you have to show that there's some damages. [00:30:21] Speaker 02: And so in this case, we've got attorney's fees because of a motion for reconsideration. [00:30:25] Speaker 02: And so that's the triggering point of the statute of limitations here. [00:30:28] Speaker 02: But in a lot of cases, though, Your Honor, I don't think that you're going to have those damages earlier on in the case. [00:30:33] Speaker 02: And so it may not be triggered until the conclusion of the appeal and the client actually has real damages. [00:30:40] Speaker 02: So that's true, but I want to qualify that a little bit, because there could be situations where it's different. [00:30:46] Speaker 02: Thank you. [00:30:47] Speaker 02: Thank you, Your Honor. [00:31:00] Speaker 04: Good morning, Your Honor. [00:31:01] Speaker 04: May it please the Court. [00:31:02] Speaker 04: Peter Gloss for the Kratz Appellate is more a group of law firms that have a pretty unique spot in this appeal and in the underlying case before the District Court. [00:31:13] Speaker 04: And that the only reason that we are here is by virtue of the fact that the Kratz defendants practiced in the same law firm as the Westerman defendants until October 1, 2003, when the Westerman defendants left to form their own law firm and the appellant C affirmatively discharged Kratz's counsel and transferred everything with the underlying patent and interference proceeding to the new Westerman firm. [00:31:37] Speaker 04: The significance of the firm split was recognized by Judge Urbina back in 2012 on his opinion with regard to the motions that Smith's when he found that I believe I quote. [00:31:47] Speaker 04: the crash defendants are not accountable for those actions taken by the Westman firm after the Westman firm took over the seized representation. [00:31:55] Speaker 04: Now that's dealing with a little bit different issue than specifically for this court. [00:31:59] Speaker 04: The issue before this court is that the statute of limitations bars all claims prior to October for actions, excuse me, prior to October 1, 2003 against the [00:32:10] Speaker 04: the Pratt's defendants. [00:32:11] Speaker 04: And this is for two reasons. [00:32:14] Speaker 04: First, under the discovery rule, as recognized here in the District of Columbia, which is the triggering point for the accrual of the statute of limitations, Seed was on notice of this claim, on inquiry notice of this claim, on April 4, 2003, at which time they sent a fax to the defendants who still practice in the same firm this time, [00:32:35] Speaker 04: In response to the denial of the request for reconsideration on the date regarding PCT 947, where they stated their understanding that the request was denied because of a quote unquote procedural mistake of not filing the English language translation. [00:32:53] Speaker 04: And that is the exact act of malpractice that is allegedly at issue in this case. [00:32:59] Speaker 04: At that point, they've suffered damages in the form of attorneys fees, [00:33:03] Speaker 04: They've acknowledged the cause of the denial of the request and the loss of PCT 947, and they've stated their understanding that it was an act of a mistake of their own counsel. [00:33:14] Speaker 04: I think that Mr. Michael John, arguing for seed, stated that the accrual period shouldn't have started until as late as about 2006 when this was all over. [00:33:25] Speaker 04: He kind of states that accrual should be a subjective standard as to when the [00:33:30] Speaker 04: the client has a full appreciation for their damages, and that's just not consistent with any DC case law from the Court of Appeals for the District of Columbia, or this court, or even the district court in the District of Columbia. [00:33:44] Speaker 04: No case has ever held that. [00:33:46] Speaker 01: and the courts continuously reject that argument. [00:34:02] Speaker 04: other crystal clear dates where the statute of limitations would begin to run. [00:34:08] Speaker 04: Now, I think that the May 2004 date would set a bad precedent. [00:34:14] Speaker 04: Although it would be correct, it would set a bad precedent because they were also on notice considerably earlier than that. [00:34:20] Speaker 04: But I would agree with you that the [00:34:24] Speaker 04: the issuance of the Federal Circuit appeal, without question, started running statute of limitations, which is also more than three years before the effective date of complaint against the press defendants, which is May 10, 2007, under the tolling agreement with the press defendants. [00:34:39] Speaker 04: Now, on the continuous representation rule, [00:34:42] Speaker 04: we've talked a little bit between both lawyers who have already argued that whether it starts to whether it's easy to have an effect on appeal and to the extent it does continue after the original board decision [00:34:59] Speaker 04: denying the filing date of PCT 947, which started the appellate process and the underlying interference. [00:35:06] Speaker 04: It cannot apply to the crash defendants after October of 2003. [00:35:11] Speaker 04: And this is because they were already on notice under the inquiry notice standard of this malpractice plan by the time they discharged. [00:35:19] Speaker 05: What if they hadn't been? [00:35:20] Speaker 04: If they had not been, then we can look at the May 4, 2004 date. [00:35:25] Speaker 04: And I think that the issue of whether it terminates, the continuous representation rule terminates on appeal, becomes more important there. [00:35:34] Speaker 04: And it certainly should terminate on appeal as to a former law firm. [00:35:40] Speaker 04: You have the Federal Circuit decision, which and you do have some subsequent action by the now the Westman firm going to the Supreme Court where sir was not asking for reconsideration. [00:35:54] Speaker 04: But when you have all of these facts, [00:35:57] Speaker 04: know if you have to come to a hard and fast rule as to when the continuous representation rule ceases. [00:36:04] Speaker 04: But in this case, it must cease for the prior law firm, who first of all had the lawyers who were left in the prior law firm had no involvement in this underlying [00:36:18] Speaker 04: patent and interference proceedings in the first instance. [00:36:22] Speaker 04: And then you get to May 4, 2004, when the Federal Circuit comes down, you have to start running the statute of limitations period eventually. [00:36:33] Speaker 04: And it would be extraordinarily inequitable to hold a former law firm liable for years and years and years and years. [00:36:44] Speaker 04: after the attorneys handling the case leave. [00:36:47] Speaker 04: Attorneys leave law firms all the time these days, and it would create exceptional difficulty in determining how long you're going to be liable for something that the leading attorney, the allegedly negligent attorney, did once they leave the law firm. [00:37:05] Speaker 04: It would affect practice premiums, it would affect [00:37:08] Speaker 04: it would affect coverage because there's real arguments as to when you have to give notice to your malpractice carrier of a potential claim, and they may deny coverage. [00:37:22] Speaker 04: So I think if there's any date for the continuous representation rule to cease to have any effect, it would be the October 2003 split. [00:37:36] Speaker 04: But then again, [00:37:37] Speaker 04: in May of 2004. [00:37:38] Speaker 04: I would just like to point the court to the analysis of the Supreme Court of West Virginia in Dunvey Rockwell, which we cite to in our brief. [00:37:47] Speaker 04: And that was a fact pattern that's pretty similar to the fact pattern here. [00:37:50] Speaker 04: The D.C. [00:37:51] Speaker 04: Court of Appeals hasn't necessarily addressed this exact fact pattern with regard to former law firms, but the West Virginia Supreme Court in Dunvey Rockwell found that when [00:38:00] Speaker 04: A client was on inquiry notice under their discovery rule of a possible malpractice claim prior to the point where that negligent attorney left the law firm. [00:38:09] Speaker 04: He quote unquote crippled the claim against the former law firm because the statute of limitations started running when the attorneys left and took the client with them at that point. [00:38:20] Speaker 04: It can be a harsh result, but as Mr. Michael Chong pointed out, I think I quote him, [00:38:25] Speaker 04: Um, lots of rules are brutal. [00:38:28] Speaker 04: The statute of limitations can be brutal. [00:38:31] Speaker 04: Um, and we have to make policies. [00:38:34] Speaker 05: I think by that you're saying that the statute begins running when you leave the firm. [00:38:39] Speaker 04: So you're saying I think it would be dependent on the fact of the situation under the facts of this case when the client is on inquiry notice of their possible malpractice claim. [00:38:49] Speaker 04: prior to the time when the allegedly negligent attorney leaves the firm. [00:38:53] Speaker 04: And despite that fact, the client still discharges the old law firm and goes with the new law firm. [00:39:01] Speaker 04: Yes, certainly that the statute of limitations started to run at that point. [00:39:05] Speaker 04: A different fact pattern may have a different result, but certainly under the facts of this case, I think that's the appropriate analysis. [00:39:14] Speaker 04: If the court doesn't have any further questions, I'll yield to my colleague for rebuttal. [00:39:19] Speaker 05: Thank you. [00:39:24] Speaker 03: Thank you, Your Honor. [00:39:25] Speaker 03: Just a couple of points. [00:39:26] Speaker 03: Your Honor asked whether the PCT translation has to be certified, and my colleague said yes. [00:39:34] Speaker 03: But in the [00:39:37] Speaker 03: Federal Circuit decision in Steven's case, it says at page 1334, as the board pointed out, however, section 371, that's the PCP section, does not require an affidavit attesting to the accuracy of the translation, while rule 647 does. [00:39:56] Speaker 03: Again, that's for the purpose of, that's the distinction between the two. [00:40:00] Speaker 03: For PCP purposes, it's just a formality. [00:40:04] Speaker 03: For the interference purposes, it's essential because the defendants below had the burden of proving that the invention in the later application was disclosed in the earlier one. [00:40:16] Speaker 03: You could have a first set of foreign filed applications in Japan talking about a method of baking a cake and then file a PCP off of it and say directed to making it pharmaceutical. [00:40:27] Speaker 03: First of all, in Japanese you can't read it. [00:40:30] Speaker 03: Secondly, if it's in, if you've got a translation but it's a wrong translation, it just can't work. [00:40:36] Speaker 03: These are rules, procedural rules of the Interference Board which have been, they have plenary authority to make these rules and they've been sustained. [00:40:46] Speaker 03: Second point with respect to the MPEP, your honor mentioned that the MPEP [00:40:53] Speaker 03: Is there anything in there that says that the Rule 637 doesn't apply to PCP application? [00:41:00] Speaker 03: The answer is no. [00:41:01] Speaker 03: First of all, the MPE doesn't have the force of law. [00:41:06] Speaker 03: There's many cases that say that. [00:41:08] Speaker 03: No contradictory cases. [00:41:10] Speaker 03: Secondly, if you look at the, I don't think that helps you in this context, but go on to the next. [00:41:16] Speaker 03: If you look at the way ex parte and interparties proceedings are carried out, first of all, the statutes [00:41:25] Speaker 03: that apply to each are in different chapters of 35 U.S. [00:41:29] Speaker 03: Code. [00:41:30] Speaker 03: Secondly, the regulations are in different chapters of 37 CFR, and in the MPE, they're in different sections of the different chapters of the MPE. [00:41:40] Speaker 03: Even in the patent office, physically, you've got a next-party section, and you've got inter-party sections for interferences. [00:41:49] Speaker 03: They make much of this [00:41:54] Speaker 03: decision inquiry notice on 03. [00:41:57] Speaker 03: It doesn't make any sense to me because at that time we won. [00:42:01] Speaker 03: We won the case. [00:42:02] Speaker 03: If we tried to file a lawsuit the next day after, even if we knew that they made the mistake in not filing the translation, if we tried to file a lawsuit the next day, we couldn't do it. [00:42:14] Speaker 03: We won. [00:42:15] Speaker 03: They granted priority to our plan, mistakenly. [00:42:18] Speaker 03: And the Federal Circuit fixed that up. [00:42:20] Speaker 03: Now at that point, I don't think we could either because under Wagner, [00:42:24] Speaker 03: It says when a mistake is made in litigation, you have to wait until the litigation ends to see whether it's resolved or not. [00:42:33] Speaker 03: Sometimes you might make a mistake. [00:42:35] Speaker 03: For example, in Wagner, a plaintiff thought that his lawyer did a terrible job in discovery of a $10 million case. [00:42:41] Speaker 03: They took the deposition of lawyers for about an hour, made other [00:42:47] Speaker 03: and a screw-up in litigation, but they have to wait until the decision is actually rendered because there may be something else that fixes up that issue so that you eventually win the case. [00:43:01] Speaker 03: With respect to the continuous representation in the rule, clearly the Demai case holds that it applies through appeal, actually through the entire representation. [00:43:14] Speaker 03: I think the one issue we have here is whether it goes back, does it go back to the Kratz firm, or does it just apply to the [00:43:22] Speaker 03: to the Westermint firm, which was the second firm that handled the case. [00:43:26] Speaker 03: The case law, as I can see, is unanimous that it does go back. [00:43:31] Speaker 03: There's one case where the court holds it differently, but there's no explanation, no discussion of the authorities. [00:43:38] Speaker 03: That's the West Virginia case. [00:43:40] Speaker 03: It's called, I forgot what the last name is. [00:43:42] Speaker 03: But the policies underlying the continuous representation rule are the same, whether it's the firm that the lawyer is now in or the firm that he was in when he committed the malpractice. [00:43:56] Speaker 03: What are the policies? [00:43:57] Speaker 03: The policies don't interfere with the attorney-client relationship. [00:44:02] Speaker 03: There's obviously going to be some rancor when you start suing the attorney. [00:44:06] Speaker 03: And even in the earlier firm, if we were to sue Kratz at the time, Westerman was still representing him in the underlying litigation, Kratz could bring in Westerman into that case for a contribution or any other reason. [00:44:22] Speaker 03: So don't interfere with the relationship. [00:44:25] Speaker 03: In malpractice, you waive the privilege with respect to a lot of stuff, and the client's put in a tough position. [00:44:33] Speaker 03: So there's a lot of cases in New York, particularly we have four of them in our brief, which goes through those policies and says there's no reason why the due representation rule shouldn't go backwards. [00:44:48] Speaker 03: So every case I've seen is consistent with that, except that one done where there's no [00:44:52] Speaker 03: explanation. [00:44:54] Speaker 03: Okay, thank you. [00:44:56] Speaker 03: Okay, thank you. [00:44:57] Speaker 03: Case is submitted.