[00:00:11] Speaker ?:
Ah!

[00:01:11] Speaker 03:
Our second case this morning is number 14-1525 Biogen versus Japanese Foundation, Mr. Fick.

[00:01:28] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:01:32] Speaker 02:
I'd like to start with the subject matter of jurisdiction decision in the District Court.

[00:01:38] Speaker 02:
AIA Section 3 contains the amendments that transition our patent system from first to invent to first inventor to file.

[00:01:48] Speaker 02:
Section 3N1 of the AIA states unambiguously that the amendments of Section 3 shall apply to patents and patent applications with effective filing dates after

[00:02:07] Speaker 02:
those amendments took effect on March 16, 2013.

[00:02:10] Speaker 02:
It does not say that only some of those amendments shall apply.

[00:02:15] Speaker 02:
It says the amendment shall apply.

[00:02:18] Speaker 03:
Do you agree that apart from 3N that you don't have an argument that 146 applies?

[00:02:28] Speaker 02:
Well, I would agree, Your Honor, that 3N1 is the provision of the AIA

[00:02:36] Speaker 02:
that provided for a transition from first to file to first to invent.

[00:02:41] Speaker 02:
And that is the provision that says that the amendment to section 135, the amendment to section 146 only apply to patents and applications with effective filing dates after March 16, 2013.

[00:03:00] Speaker 02:
So your whole argument rests on 3N.

[00:03:02] Speaker 02:
3N1, we believe, is controlling, yes.

[00:03:06] Speaker 06:
And then I guess the main concern I have is what do we do about 6F3C, where there's a specific provision that expressly authorizes judicial review from certain interferences.

[00:03:21] Speaker 06:
And then if we take that on its face, that appears to create a problem with your reading of 3N1 in the sense that

[00:03:30] Speaker 06:
your reading of 3N1 renders that provision in 6F3C with respect to 146 superfluous.

[00:03:37] Speaker 02:
Yeah, I know that as an argument that the appellees have made.

[00:03:40] Speaker 02:
It is wrong.

[00:03:46] Speaker 02:
I think if you look at sort of what Congress did here, it said what do we do with the patents and applications that were filed under the first two invent laws?

[00:03:57] Speaker 02:
It would be unfair to treat them under the new first to file laws.

[00:04:01] Speaker 02:
And so it provided in three in one that we're only going to apply the first two file laws to patents and applications that were filed under the first two file laws.

[00:04:14] Speaker 02:
In other words, after March 16th.

[00:04:17] Speaker 02:
And that works fine because if you look at section 146 and section 135, you can apply the earlier versions to those proceedings.

[00:04:30] Speaker 02:
The only problem is that those pre-AIA versions of those statutes refer to the BPAI and not to the PTAB.

[00:04:42] Speaker 02:
But Congress recognized that, and they took care of that in Section 7A1 that says, when you see a reference in the statute to BPAI, you should deem that to be PTAB.

[00:04:55] Speaker 02:
So it's very clear that Congress dealt with those

[00:05:00] Speaker 02:
pre-AIA patent applications in that way.

[00:05:04] Speaker 02:
The problem that I think Congress then saw was that this is fine for interferences that were declared on or after September 16th of 2012, but it doesn't take care of the interferences that were filed before then.

[00:05:22] Speaker 02:
And the reason for that is that Section 7A that has that shall be deemed language in it

[00:05:30] Speaker 02:
The effective date of that was September 16, 2012, and Section 7E says that that amendment in Section 7 only applies to proceedings that were after September 16, 2012.

[00:05:49] Speaker 02:
And so the point here is you have a clean line of demarcation.

[00:05:55] Speaker 02:
Section 6F3C took care of interferences that were declared before and pending as of September 16th.

[00:06:02] Speaker 02:
But not later than that.

[00:06:04] Speaker 03:
So you're saying that it's just straightening out a terminology issue, which would have been easy to do in some other way.

[00:06:12] Speaker 03:
It doesn't really explain to me anyway why we've got 6F in the statute, which seems to be very specific and doesn't tie it to the

[00:06:23] Speaker 03:
filing date of the patent but to the date of the commencement of the interference proceeding.

[00:06:32] Speaker 03:
I'm having trouble understanding why congress would have enacted this rather detailed provision here just to deal with what you say is a terminology.

[00:06:40] Speaker 02:
Well it may very well be that congress could have done something done this differently I don't know but what we have to deal with is what they said.

[00:06:49] Speaker 02:
Well that's your problem.

[00:06:51] Speaker 02:
And what they said is

[00:06:53] Speaker 02:
No one disputes.

[00:06:54] Speaker 02:
6F3C only applies to interferences that were pending on and declared before September 16, 2012.

[00:07:02] Speaker 03:
The question is whether you should then... If you put aside the terminology question, why do you need 6F under your view of 3N?

[00:07:16] Speaker 02:
Because 3N only applies to proceedings that were declared

[00:07:23] Speaker 02:
after September 16, 2012.

[00:07:26] Speaker 02:
And the reason for that is the statutory provision in 7A that says you shall deem the BPAI to be the PTAB does not apply to proceedings declared before September 16, 2012.

[00:07:47] Speaker 02:
So there is a very clean line of demarcation

[00:07:50] Speaker 02:
Whether Congress might have done it differently.

[00:07:53] Speaker 02:
I'm not seeing that.

[00:07:55] Speaker 03:
I mean, here we have this provision that says it depends on when it was commenced.

[00:08:02] Speaker 03:
And then in 3N, under your reading of it, we seem to have something which is inconsistent that depends on when the patent application was filed.

[00:08:16] Speaker 02:
Yes, 3N.

[00:08:19] Speaker 02:
The shall apply language in Section 3N has to mean something.

[00:08:24] Speaker 02:
Now, what the district court said was when the 3N amendments came into effect, it swept away all of the old provisions of the law.

[00:08:32] Speaker 02:
Well, we know that's not true.

[00:08:34] Speaker 03:
Well, 3N has meaning because it's dealing with when the first-to-file rule comes into effect.

[00:08:40] Speaker 03:
And so it focuses on the date of the filing of applications, right?

[00:08:44] Speaker 02:
Yes, but it says the amendments of Section 3

[00:08:48] Speaker 02:
shall apply.

[00:08:49] Speaker 02:
Among the amendments in section three are the three I amendments to section 135 and the section three J amendments to section 146.

[00:08:57] Speaker 02:
And it says they shall apply to patent applications with effective filing dates after March 16th when the first to file amendments came into effect.

[00:09:12] Speaker 02:
And the shall apply language has to have meaning and

[00:09:17] Speaker 02:
If you look at the very next section of Section 3N, there they're dealing with very special kinds of cases that have mixed claims where the applicant is trying to get filing dates both before and after the first to file amendments.

[00:09:33] Speaker 02:
There, they specify only three of the provisions are preserved.

[00:09:37] Speaker 02:
In contrast, in Section 3N, it says the amendments shall apply.

[00:09:43] Speaker 02:
I don't think there's any basis for reading a limitation into that.

[00:09:47] Speaker 02:
And going back to your earlier question, your honor, 3N and 6F3C are entirely compatible with one another because 6F3C only applies to these interferences that were declared by the BPAI and that were pending before the BPAI as of September 16, 2012.

[00:10:09] Speaker 02:
3N, which applies to pre-AIA versions of the statute,

[00:10:15] Speaker 02:
only apply to proceedings that were declared after September 16, 2012 and only apply to pre-AIA patents and applications.

[00:10:26] Speaker 02:
So I think these two provisions have different purposes and they apply to interferences declared at different times.

[00:10:35] Speaker 04:
I think the district court attached some significance to the technical correction amendment.

[00:10:44] Speaker 04:
What do you have to say about that?

[00:10:46] Speaker 04:
Well, the technical correction amendment recognized, the reason for that was that Congress... Specifically what's at 126, 126 stat 2458 in your addendum.

[00:10:59] Speaker 02:
Yes, it's, and it was section 1K3, I believe.

[00:11:03] Speaker 02:
Yes.

[00:11:06] Speaker 02:
When Congress enacted the AIA initially,

[00:11:11] Speaker 02:
In section 7C of the AIA, it delineated the proceedings that are reviewable by this court.

[00:11:21] Speaker 02:
It forgot to include review of section 1 of interference decisions.

[00:11:28] Speaker 02:
It was simply an interference oversight.

[00:11:30] Speaker 04:
You're saying the fact that 146 isn't mentioned in this provision is just an oversight.

[00:11:36] Speaker 02:
No, no.

[00:11:37] Speaker 02:
It was not an oversight at all.

[00:11:41] Speaker 02:
review was not restored because it was never eliminated in the first place.

[00:11:47] Speaker 02:
Because 146 review was preserved by Section 3N1, which says the pre-AIA version of 146 applies to proceedings after September 16, 2012.

[00:12:00] Speaker 04:
So your view is that given your reading of 3N1, you're saying the technical correction amendment provision doesn't really

[00:12:09] Speaker 02:
It doesn't have anything to do with this.

[00:12:13] Speaker 02:
There's no question Congress had to fix the fact that it inadvertently eliminated Federal Circuit Review.

[00:12:20] Speaker 02:
It didn't have to restore 146 Review because it had not inadvertently deleted it in the first place.

[00:12:27] Speaker 06:
Is there any legislative history by any chance?

[00:12:29] Speaker 02:
No, and I think, Your Honor, that's significant.

[00:12:35] Speaker 02:
Basically what the appellees are arguing here is that Congress

[00:12:38] Speaker 02:
did away with 146 review, a review that has important purposes and had existed for over 100 years.

[00:12:48] Speaker 02:
It did away with it for everything up to September 16, 2012.

[00:12:52] Speaker 02:
Then it eliminated it for that six month period between September 16, 2012 and March 16, 2013.

[00:13:01] Speaker 02:
And then it restored it.

[00:13:03] Speaker 02:
That makes no sense.

[00:13:04] Speaker 02:
And it did all of this without any comments.

[00:13:07] Speaker 06:
Are you talking about 146?

[00:13:08] Speaker 02:
Yes?

[00:13:09] Speaker 06:
I don't think the other side is suggesting that it restored 146 after 1623.

[00:13:14] Speaker 02:
Yeah, they've acknowledged that 146 is restored for derivation proceedings.

[00:13:20] Speaker 02:
OK, for derivation proceedings, but not for interferences.

[00:13:22] Speaker 02:
The only thing that changed in section 146 with the AIA was the word interference was replaced with derivation proceedings.

[00:13:30] Speaker 02:
And so if 146 review was viewed so negatively by Congress,

[00:13:37] Speaker 02:
one would wonder why did they keep it for derivation proceedings.

[00:13:40] Speaker 02:
And anyone that's ever been involved in a derivation proceeding knows that they are as fact-intensive and can be as complicated as priority contests.

[00:13:49] Speaker 06:
Right, but there is that one statement by Congressman Smith, right, with the Technical Corrections Act, where in support of that act he suggested that we need to do Section 1K3 in order to authorize

[00:14:05] Speaker 06:
interference proceedings and a judicial review for interferences that are declared after September 16th or on or after September 16th, 2020.

[00:14:16] Speaker 02:
Yeah.

[00:14:16] Speaker 02:
And, and what he said is so the courts can review, but what they restored was reviewed by this court because the review by this court was the only thing that was inadvertently omitted by the original AIA.

[00:14:34] Speaker 03:
Could I bring you back for a moment to 3N, and there's the word and in there.

[00:14:41] Speaker 03:
I'm sorry, Your Honor.

[00:14:43] Speaker 03:
3N.

[00:14:43] Speaker 03:
3N1.

[00:14:44] Speaker 03:
3N1 in front of you.

[00:14:45] Speaker 03:
There's the word and in that sentence.

[00:14:50] Speaker 03:
It was on page 293 of your appendix.

[00:14:56] Speaker 03:
And shell upon?

[00:14:57] Speaker 03:
Yeah.

[00:14:59] Speaker 03:
Why shouldn't that be read to say, with respect to,

[00:15:03] Speaker 03:
applications that contain.

[00:15:06] Speaker 03:
In other words, it's telling you the effective date for applications filed after this 18-month period.

[00:15:17] Speaker 03:
In other words, under that construction, it wouldn't be dealing at all with applications that were filed earlier and that would be subject to interferences.

[00:15:29] Speaker 02:
I read and simply to mean

[00:15:32] Speaker 02:
that this statute is doing two things.

[00:15:35] Speaker 02:
It's telling you the date that the statutory language change actually occurs.

[00:15:41] Speaker 02:
That was March 16, 2013.

[00:15:44] Speaker 02:
And it's telling you what that statutory language applies to.

[00:15:48] Speaker 03:
Well, that's a problem because if it's telling you what it applies to and it's applying to new applications, not old applications, we can use that shorthand.

[00:15:58] Speaker 02:
That's correct.

[00:16:00] Speaker 02:
What this is saying is that

[00:16:02] Speaker 02:
Section 3, we have amended the patent system to go from first to invent to first to file.

[00:16:10] Speaker 02:
But those changes only apply to new applications.

[00:16:13] Speaker 02:
We're not going to impose those changes on people who filed under the first two invent laws.

[00:16:19] Speaker 02:
And I would point out, Your Honor, this language you see throughout the AIA, there are a number of provisions that have this

[00:16:32] Speaker 02:
construction where the amendment takes effect at a certain time but then shall apply to certain classes of patents and patent applications.

[00:16:42] Speaker 02:
6C2A, 6F2A, 7E, all of these have that same construction where it's very clear that Congress was

[00:16:53] Speaker 02:
was creating a transition from first to invent to first to file.

[00:16:58] Speaker 02:
And we know that's the case.

[00:16:59] Speaker 02:
I mean, this court deals with cases every day where you are applying the pre-AIA version of the patent statutes to pre-IA patents and applications.

[00:17:14] Speaker 03:
OK.

[00:17:17] Speaker 03:
Well, I guess you can take a moment

[00:17:23] Speaker 03:
merits of the Board's decision.

[00:17:27] Speaker 02:
The PTAB decision, yeah.

[00:17:30] Speaker 02:
Thank you, Your Honor.

[00:17:32] Speaker 02:
These cases go back to 1980, as you know, and we believe this Court should only review the PTAB decision if it concludes that the District Court lacked jurisdiction.

[00:17:45] Speaker 02:
In 1980, these two parties were involved in two races.

[00:17:49] Speaker 02:
One race was to

[00:17:51] Speaker 02:
clone and isolate the DNA.

[00:17:53] Speaker 02:
The other one was to engineer that DNA into cells that would make the protein.

[00:17:58] Speaker 02:
Sagano filed a patent application in March 19th.

[00:18:03] Speaker 03:
Did the PTA make a mistake in issuing the shell cause order as to whether the protein claims were obvious over the DNA claims?

[00:18:17] Speaker 02:
We believe that the PTAB

[00:18:20] Speaker 02:
made a very fundamental mistake in that, Your Honor.

[00:18:24] Speaker 02:
It was a mistake that ignored evidence, based a decision on with a lack of evidence, and was very much inconsistent with what the PTAB had done earlier on a number of occasions.

[00:18:37] Speaker 03:
No, but I don't think you're quite answering my question.

[00:18:40] Speaker 03:
I mean, they just show cause order and said that the protein claims were obvious.

[00:18:47] Speaker 03:
over the, were not patentably distinct, over the DNA claims.

[00:18:53] Speaker 03:
And are you challenging the issuance of the show cause order?

[00:18:59] Speaker 02:
Yes.

[00:18:59] Speaker 02:
Well, first of all, because of the lack of enablement in Sagano, fear should have been senior party in this case.

[00:19:08] Speaker 02:
And so there should not have been.

[00:19:10] Speaker 02:
But aside from that, aside from that, I'll address your question if I may, Your Honor.

[00:19:19] Speaker 02:
A part of obviousness is whether the prior ARC even enables the production of the protein.

[00:19:27] Speaker 02:
We submitted a declaration by Dr. David Jackson that went through systematically why there was no enablement by the Sagano application.

[00:19:37] Speaker 02:
Now, what did Sagano's application teach?

[00:19:39] Speaker 02:
It taught the DNA sequence.

[00:19:41] Speaker 02:
I don't think you're answering my question.

[00:19:43] Speaker 03:
Are you challenging the issuance of the SHO-COSR?

[00:19:47] Speaker 03:
The PTO issued a show cause order saying show cause why the protein claims are patentably distinct from the DNA claims.

[00:19:58] Speaker 03:
Are you arguing that they made a mistake in issuing the show cause order?

[00:20:02] Speaker 02:
Well, I don't think they should have issued the show cause order because that show cause order was inconsistent with a number of decisions they had already made.

[00:20:11] Speaker 02:
Now, if I can explain why.

[00:20:14] Speaker 02:
The very claims that we're talking about here in the Fears application were rejected over the Sagano case, were on appeal, and the board said that there was insufficient evidence to conclude that those claims were patentably indistinct from the DNA claims.

[00:20:36] Speaker 06:
What the board said was the examiner had not done a sufficient showing, and it doesn't take any position on the actual merits of whether the protein is obvious over the DNA nucleotide sequence.

[00:20:45] Speaker 02:
You're absolutely right, Your Honor.

[00:20:47] Speaker 02:
And what the board said was the examiner has not produced sufficient evidence from which we can conclude that they are patentably instinctive.

[00:20:56] Speaker 02:
So it's still an open question.

[00:20:57] Speaker 02:
What was the evidence that the examiner had?

[00:21:00] Speaker 02:
The Sagano application disclosed the DNA and the deduced amino acid sequence.

[00:21:05] Speaker 02:
It was exactly the same evidence before the board here.

[00:21:09] Speaker 02:
The board ruled then that evidence was not sufficient, ruled here that that evidence was sufficient, and ruled that because you could deduce the amino acid sequence, that was the sole basis for the board's decision on patentable distinctness.

[00:21:25] Speaker 02:
There's another point I'd like to make on this.

[00:21:29] Speaker 02:
It's kind of ironic, but the very reason Sagano is in this interference is because the board concluded that Sagano's protein claims were patentably distinct from his DNA claims.

[00:21:45] Speaker 02:
His DNA claims were in the patent that issued from the earlier interference.

[00:21:49] Speaker 02:
The count was almost identical to the claim that he had in his 859 patent.

[00:21:56] Speaker 02:
The patent office allowed his protein claims over that patent, did not issue a double patenting rejection.

[00:22:05] Speaker 02:
There was never a restriction requirement in that case because he never presented protein claims in that case.

[00:22:12] Speaker 02:
Never issued a double patenting rejection, never issued a restriction requirement.

[00:22:16] Speaker 02:
The only way, and then the board allowed that and declared this interference.

[00:22:21] Speaker 02:
The only way you can justify that is to conclude

[00:22:24] Speaker 02:
that it is for the board to have concluded that Sagano's protein claims were patentably distinct.

[00:22:30] Speaker 02:
Otherwise, he wouldn't even be in this interference.

[00:22:33] Speaker 02:
And I guess the other point I want to make is the irony here also is that fears A, he put his claims in the application that's involved here in response to a restriction requirement.

[00:22:52] Speaker 02:
Section 121 says,

[00:22:55] Speaker 02:
A prerequisite for a restriction requirement is patentable distinctness.

[00:22:59] Speaker 02:
But then Beers attempted, moved to add protein counts to the earlier interference, was denied that opportunity and was told you can't do that unless you make a statement that is incorrect and you admit your case away.

[00:23:21] Speaker 02:
And I would submit, Your Honor, the law can't be that to avoid estoppel, you have to make an incorrect statement to the Patent Office and admit your case away.

[00:23:30] Speaker 02:
Fierce could not state that the claims were patentable to Sagano because they are not.

[00:23:36] Speaker 02:
We know that the claims corresponding to Count 1, this court has actually held that there is no support in the Sagano March patent application for those claims.

[00:23:46] Speaker 02:
So Fierce was right.

[00:23:48] Speaker 02:
The question on estoppel is,

[00:23:51] Speaker 02:
Did you attempt to add the claims, and were you refused?

[00:23:54] Speaker 02:
And that's exactly what happened here.

[00:23:57] Speaker 02:
I would say the Stout versus Guggenheim and the N. Ray Ferlett cases say that there is no stopple when that situation applies.

[00:24:05] Speaker 03:
I want to bring you back to the show cause order.

[00:24:07] Speaker 03:
If the show cause order was properly issued, then you had the burden of coming in to overcome the show non-obviousness, right?

[00:24:21] Speaker 02:
I think that's right.

[00:24:22] Speaker 02:
I think what the case law says is we had to make a prima facie case.

[00:24:28] Speaker 02:
Okay.

[00:24:30] Speaker 03:
All right.

[00:24:30] Speaker 03:
Thank you.

[00:24:31] Speaker 03:
We'll give you two minutes for a rebuttal.

[00:24:33] Speaker 03:
Thank you, Your Honor.

[00:24:41] Speaker 03:
Mr. Walden?

[00:24:42] Speaker 05:
Yes, sir.

[00:24:44] Speaker 05:
May it please the court.

[00:24:47] Speaker 05:
My name is Calvin Walden and I've reserved 11 minutes.

[00:24:50] Speaker 05:
My co-counsel

[00:24:51] Speaker 05:
Mr. Burrell has reserved three minutes and will address the issue specifically of whether the district court's transfer of the case to this court is reviewable by this court.

[00:25:03] Speaker 03:
That's what he's going to address?

[00:25:06] Speaker 03:
Yes.

[00:25:10] Speaker 03:
Help me out with the three N and the word and in there.

[00:25:16] Speaker 03:
Does that mean that these amendments only apply to

[00:25:21] Speaker 03:
newly issued patents?

[00:25:23] Speaker 05:
I think that word and does do that.

[00:25:28] Speaker 05:
And I think it also makes clear for the second part of this clause, which patents, what the subject matter it's referring to, it talks about patents and applications.

[00:25:38] Speaker 05:
So the first part of the clause in 3N.1, there are states that the amendments provided in this section shall take effect upon the expiration of the 18 month period.

[00:25:51] Speaker 05:
is why 146, being among the other provisions that were affected by Section 3, was amended in March of 2013, and therefore no longer says interferences, but if you look at the statute, it talks about derivation proceedings.

[00:26:07] Speaker 05:
The second part of the clause, it says, and shall apply to any application for patent and to any patents issuing thereon that contains

[00:26:14] Speaker 05:
And what it describes there are claims that have been filed after what they call they've moved over to the first to file regime.

[00:26:22] Speaker 05:
So any application that contains first to file claims.

[00:26:25] Speaker 05:
So I think you put those two provisions together and what you see is that 146, for example, or other provisions, 135, 102, and 103 were all amended in March of 2013.

[00:26:38] Speaker 05:
And then there's the second provision that says, and for those provisions that are dealing with patent applications,

[00:26:43] Speaker 05:
we know that the amended versions of those statutes will be applicable to applications containing first-to-file claims.

[00:26:51] Speaker 03:
So what it's saying in your view is that after the 18-month period, it's effective as to all applications, new and old.

[00:27:00] Speaker 03:
That's correct.

[00:27:01] Speaker 03:
That's correct.

[00:27:01] Speaker 05:
I mean, the new language of 146 or 135, for example, now talks about derivation proceedings.

[00:27:10] Speaker 05:
And those derivation proceedings are for

[00:27:13] Speaker 05:
first-to-file crimes, and then ultimately appeals of those are for first-to-file crimes as well.

[00:27:19] Speaker 05:
And so when Biogen, for example, says that they find an affirmative grant of jurisdiction, which is what the district court needed out of 3-in-1, there simply is not that affirmative grant.

[00:27:30] Speaker 05:
At the end, what they're trying to make is a grant essentially out of 3-in-1 by negative inference.

[00:27:37] Speaker 03:
They're trying to say... So you're saying it wiped out 146 after the 18-month period and then you needed Section 6 plus the technical amendments to restore some sort of review for them.

[00:27:49] Speaker 05:
That's correct.

[00:27:50] Speaker 05:
That's correct.

[00:27:51] Speaker 05:
That Congress actually made clear through different other provisions when it

[00:27:56] Speaker 05:
wanted to preserve essentially an old version of a statute or, in the case of 6F3C, wanted to what it said shall be deemed to extend.

[00:28:07] Speaker 05:
Even though it's been amended, it shall be deemed to extend to certain interferences, even though the new language is for

[00:28:14] Speaker 05:
derivation proceedings.

[00:28:16] Speaker 06:
The concern I have with that position is that you're treating different amendments to different sections of the Patent Act under Section 3 of the AIA differently in the sense that you're saying, I think you're saying that as soon as March 16, 2013 kicked in, then the amended version of all those different statutes 102, 103, 135, 146,

[00:28:44] Speaker 06:
apply to any and all pending patent applications and patents at the time, and I don't think that's right.

[00:28:51] Speaker 05:
I don't think that's right, and I agree with you.

[00:28:53] Speaker 06:
What I think is what needs to be done... So you're doing some kind of splitting, as I understand it, in the sense that you think when it comes to the amendments to 102 and 103 that were done by the AIA Section 3, those are only for first file patents.

[00:29:11] Speaker 06:
but for first to invent patents, the old 102 and 103 continue to live on.

[00:29:16] Speaker 06:
So likewise, why wouldn't that also be true for the other amendments in AIA Section 3?

[00:29:23] Speaker 06:
That is Section 135 and 146.

[00:29:25] Speaker 05:
Sorry to interrupt.

[00:29:27] Speaker 05:
I think that's exactly the right question.

[00:29:29] Speaker 05:
I don't believe it is us that's treating these provisions differently with a view for the AIA and the TCA, but I believe it's Congress.

[00:29:37] Speaker 05:
So for example, for 135,

[00:29:39] Speaker 05:
We believe that 3N1 does not preserve necessarily an old 135.

[00:29:46] Speaker 05:
So what do you have to do?

[00:29:47] Speaker 06:
Why is that though?

[00:29:49] Speaker 06:
Why, I mean, we're being told by 3N1 that the amendments to all these different sections of the Patent Act are to apply to patents and patent applications that have an effective filing date after March 16, 2013.

[00:30:06] Speaker 05:
Right, well what 3N1 says is that

[00:30:08] Speaker 05:
For example, 135 is going to be amended as of March 2013, and that the newly amended 135 will be applicable to applications that contain first to file points.

[00:30:19] Speaker 05:
So 135 was amended, so no longer refers to interferences, but now refers to derivations.

[00:30:27] Speaker 05:
And then 3-in-1 says that newly amended 135

[00:30:30] Speaker 05:
shall be a proceeding that's allowed for applications that contain first-to-file claims, meaning claims that were amended afterwards.

[00:30:39] Speaker 05:
Right.

[00:30:39] Speaker 06:
But we also, by the negative implication theme, you don't contest that for first-to-invent applications, the old 102 and old 103

[00:30:51] Speaker 06:
apply to those.

[00:30:52] Speaker 05:
We don't.

[00:30:52] Speaker 05:
102, 103.

[00:30:54] Speaker 06:
So now, likewise in moving down that same train of negative implication that old 102 and old 103 apply for first to invent applications, why wouldn't that likewise be true for old 135 and old 146 for first to invent applications?

[00:31:11] Speaker 05:
I think the right question and I think the answer really boils down to, again, looking at each statute individually.

[00:31:17] Speaker 05:
For 102, 103,

[00:31:19] Speaker 05:
you have the amendment that was made by 3N1.

[00:31:23] Speaker 05:
The amended version of 102103 is going to be applicable to applications containing first to file or first to file.

[00:31:31] Speaker 03:
Isn't the answer that with respect to the old 102103, you don't have a provision comparable to 6F?

[00:31:38] Speaker 03:
Well, that's exactly.

[00:31:39] Speaker 03:
I mean, you don't have that.

[00:31:40] Speaker 05:
If you didn't have 6F in the technical amendments, you'd lose, right?

[00:31:46] Speaker 05:
I think it would be a closer call.

[00:31:48] Speaker 05:
I do believe, at the end, the court needs an affirmative grant.

[00:31:52] Speaker 05:
And even 3-in-1, without 6F3C, doesn't give that affirmative grant.

[00:31:57] Speaker 05:
It's still a negative grant.

[00:31:59] Speaker 06:
But I do agree as well, though, that the one thing- It's a negative grant for old 102, old 103, right?

[00:32:05] Speaker 05:
I think for 102, 103, it's A, it can be that there can be such a negative grant.

[00:32:11] Speaker 05:
B, we need to answer the question, what did Congress intend?

[00:32:15] Speaker 05:
If we've amended 102-103, that amended 102-103 is only applicable to first-to-file claims, then what are we to do with first-to-invent claims, including patents that have been issued?

[00:32:26] Speaker 05:
And I think it's fair to say Congress did not mean to retroactively change 102 or 103 for any types of old patents that have been issued or applications that should be looked at under the first-to-invent regime.

[00:32:39] Speaker 05:
On the other hand, that's okay, so that's 102-103 that doesn't have its 6F3C,

[00:32:44] Speaker 05:
It doesn't have a need necessarily for an affirmative grant like the district court had.

[00:32:49] Speaker 05:
So it's a little different.

[00:32:50] Speaker 03:
135.

[00:32:51] Speaker 03:
If you take away 6F and the technical amendments, why wouldn't that same reasoning apply to 146?

[00:32:57] Speaker 05:
I think at the end, the 102, 103, the Federal Circuit did not need to have, or the district courts did not necessarily need to have an affirmative grant to tell them what Congress intended.

[00:33:11] Speaker 05:
On the other hand, for 146,

[00:33:13] Speaker 05:
with an Article III court with limited jurisdiction and they're saying that his jurisdiction is under the statute, that needs to be affirmatively granted by Congress.

[00:33:23] Speaker 05:
So there's a difference in that.

[00:33:24] Speaker 05:
I'm not following that, I'm sorry.

[00:33:26] Speaker 05:
I guess the only difference I believe is that 102, 103 you may find by negative implication.

[00:33:31] Speaker 05:
146, you're not allowed to find.

[00:33:34] Speaker 03:
The district courts are not allowed to find by negative implication.

[00:33:37] Speaker 03:
I don't know why not.

[00:33:37] Speaker 03:
I mean, you're construing the statute and seeing whether 146 still exists.

[00:33:42] Speaker 03:
And if 146 still exists, then there's an explicit grant of jurisdiction.

[00:33:46] Speaker 05:
Well, at the end of the day, if all you had was three and one, I think it would be presenting a very difficult question for the court.

[00:33:55] Speaker 05:
But you don't, right?

[00:33:56] Speaker 05:
You have 6F3C as well.

[00:33:58] Speaker 05:
And 6F3C is where Congress very explicitly indicated where it wanted, it did two things in 6F3C.

[00:34:08] Speaker 05:
It very clearly said that section 146 was as amended.

[00:34:13] Speaker 05:
And then it also clearly said that as amended statute nonetheless would be extended to interferences that were declared before the September 2012 date, which just is not ours.

[00:34:27] Speaker 05:
So without 6F3C, I do agree that three and one would present a difficult question for the district court and for this court.

[00:34:36] Speaker 05:
But with 6F3C, it's a real tiebreaker.

[00:34:39] Speaker 05:
There's no ambiguity.

[00:34:41] Speaker 05:
Where Congress intended for there to be review under 146 for interference proceedings, they made it clear.

[00:34:48] Speaker 05:
And then they further made it clear in the Technical Corrections Act

[00:34:51] Speaker 05:
When in that part of the technical corrections act, the provisions that you were talking about earlier, there they did two things that they made clear.

[00:35:03] Speaker 05:
One, is they made clear there should continue to be interference proceedings for interferences that can be declared after the September 2012 date.

[00:35:12] Speaker 05:
And then second, they made clear there can be appeals of those under section 141 and 1295A4A to this court.

[00:35:21] Speaker 05:
They clearly didn't put 146 in there.

[00:35:25] Speaker 05:
They revived, in a sense, 135.

[00:35:27] Speaker 05:
They revived 141.

[00:35:29] Speaker 05:
They simply didn't revive 146.

[00:35:31] Speaker 06:
So because they didn't say 146 in the Technical Corrections Act, do you think there's a negative implication there that they didn't want to use 146 or make 146 available?

[00:35:42] Speaker 06:
However, we shouldn't use the negative implication theory when it comes to understanding 3N laws.

[00:35:46] Speaker 05:
Not quite.

[00:35:47] Speaker 05:
Not quite.

[00:35:48] Speaker 05:
It is the biogen's burden, and it was, to show that there was an affirmative grant.

[00:35:53] Speaker 05:
We don't believe they can do that by negative implication.

[00:35:55] Speaker 05:
What I'm saying is there is no affirmative grant in 3-in-1, certainly not in 6F3C, not in the TCA either.

[00:36:04] Speaker 05:
And indeed, if you look at all of those provisions together, what you see is that Congress intended to preserve certain rights for interferences,

[00:36:12] Speaker 05:
and for appeals of those interferences, but what they clearly didn't do is intend to preserve a right under 146.

[00:36:19] Speaker 06:
Why is the provision for judicial review under 141 and 146 provided for in 6F3C, located in section 6 of the AIA, which is all about post-grant review?

[00:36:35] Speaker 05:
It's a good question.

[00:36:37] Speaker 05:
It's not entirely clear.

[00:36:39] Speaker 05:
It's the very end of Section 6, and it doesn't necessarily, in my view, jive with the entire rest of that section.

[00:36:47] Speaker 06:
Because that Section 6F seems to be contemplating the possibility of a pending interference somehow being converted into a post-grant review.

[00:36:57] Speaker 05:
That's right.

[00:36:57] Speaker 05:
How is that possible?

[00:37:00] Speaker 05:
essentially by Congress allowing this.

[00:37:02] Speaker 05:
What the Congress said in 6F3A, the first part of that final subsection of 6, it granted the Commissioner the authority, if he wanted, to do away with pending interferences, those that had already been declared in favor of post-grant proceedings.

[00:37:18] Speaker 06:
I guess what I'm wondering is interferences are for first to invent patents, patent applications.

[00:37:23] Speaker 06:
Post-grant review are for first to file.

[00:37:27] Speaker 06:
patents and patent applications.

[00:37:29] Speaker 05:
Congress did not exactly explain how the director was necessarily going to be able to transition that way.

[00:37:35] Speaker 05:
I think what would have happened would be that the interfering parties would either get their patents or not get their patents, and then if they didn't get a patent, and the other party did, then they would try to initiate some kind of post-grant review at that time.

[00:37:52] Speaker 05:
In which case, the commissioner would have to allow for that.

[00:37:56] Speaker 05:
Ultimately, that's not what occurred.

[00:37:59] Speaker 05:
What occurred is that the board has decided that 135 interferences should continue, and they should continue for applications containing first to invent claims.

[00:38:10] Speaker 05:
And so that's, we believe, fully supported under section 135.

[00:38:18] Speaker 05:
What's not fully supported now for all interferences are appeals

[00:38:22] Speaker 05:
under section 146.

[00:38:25] Speaker 05:
And those are reserved only under 6F3C for those interferences that had already been declared as of the September effective date.

[00:38:35] Speaker 03:
I want to spend a minute on the merits here and particularly address the question of whether the show clause order was properly issued.

[00:38:46] Speaker 03:
I understand Mr. Aulis to agree that if the show clause order was properly issued then the burden fell on them.

[00:38:52] Speaker 03:
to make a pre-infraction case of non-obvious.

[00:38:56] Speaker 05:
I apologize for interrupting again.

[00:38:59] Speaker 05:
Fears did not, as we've seen it in the record, object to the propriety of the order to show cause.

[00:39:08] Speaker 05:
Fears did not respond

[00:39:10] Speaker 05:
to attempt to respond to the order to show cause, we say ineffectively and without providing sufficient evidence.

[00:39:18] Speaker 05:
So we don't disagree in that sense, then the burden was on fears, was on Biogen, to demonstrate that equitable estoppel, or I'm sorry, that interference estoppel should not apply.

[00:39:29] Speaker 05:
So then the board was then presented, had been presented with the evidence that was given by the parties, and the board did ask

[00:39:38] Speaker 05:
for fears to demonstrate why the new claims to the protein are patently distinct over the earlier claims to the DNA.

[00:39:48] Speaker 05:
And fears we submit simply did not present any evidence to demonstrate patentable distinction between the protein claims and the earlier DNA claims.

[00:39:59] Speaker 05:
Just as importantly, we submit

[00:40:01] Speaker 05:
fears did not show that it shouldn't be stopped under the other types of equitable estoppel that we describe in our papers and that are set out in Woods v. Suchia.

[00:40:11] Speaker 05:
For example, the current claims that fears was trying to add to this latest, the third, the 939 interference

[00:40:19] Speaker 05:
simply read on the disclosure of Sugano going all the way back to the 096 interference.

[00:40:25] Speaker 05:
It's the same disclosure in this third interference as it was in the first one, and it's the same disclosure as it was in the second one.

[00:40:33] Speaker 05:
So not only did fears not show a patentable distinction between protein claims and DNA claims,

[00:40:43] Speaker 05:
But even more fundamentally, fears did not explain why it should, in this third interference, be able to bring protein claims when we had a protein disclosure going all the way back to 1980, and they didn't bring it in early.

[00:40:57] Speaker 06:
I think part of the point was that your original Japanese disclosure didn't disclose the protein sequence, and it tried to trigger an interference on account for the protein.

[00:41:11] Speaker 06:
and was blocked by the board in the first interference.

[00:41:15] Speaker 06:
And so it feels like it should be given that opportunity to finally resolve that question now, especially given that Sugano has claims now in an application seeking the protein.

[00:41:29] Speaker 05:
It is an argument that Fears has made.

[00:41:31] Speaker 05:
We believe it's in error for at least three reasons.

[00:41:34] Speaker 05:
First, their concentration on our Japanese disclosure is the incorrect.

[00:41:40] Speaker 05:
As the board noted, they put in a declaration from their expert, Dr. Jackson, and the board dismissed it because it was all about the Japanese application.

[00:41:52] Speaker 05:
But interference of stop all doesn't look at that issue, the ultimate issue of priority and whether we can show a first to invent necessarily.

[00:41:59] Speaker 05:
It looks at our disclosure in the earlier interferences.

[00:42:03] Speaker 05:
In other words, at our earlier US application.

[00:42:05] Speaker 06:
Well, let me just ask you a more conceptual question.

[00:42:10] Speaker 06:
Yes.

[00:42:11] Speaker 06:
in an original interference wanted to litigate an issue and the board for whatever reason said no, I'm not going to let you litigate that.

[00:42:19] Speaker 06:
Should it be blocked from litigating that issue later if that issue now is very right?

[00:42:27] Speaker 05:
If the party truly tried to get that issue before the board and then it did try to exercise its opportunity to have that

[00:42:38] Speaker 05:
attempt reviewed, then there may be some level of equity that would say, okay, you do get to have a second bite.

[00:42:46] Speaker 03:
Well, even if it was, even if the protein was obvious over the DNA?

[00:42:52] Speaker 03:
Well, no.

[00:42:55] Speaker 05:
No, I don't believe that's the case.

[00:42:57] Speaker 05:
I believe they would still be obligated to show that the protein is obvious over the DNA.

[00:43:05] Speaker 06:
What if it was?

[00:43:07] Speaker 06:
take it for granted that it was a patently indistinct invention that they wanted to add earlier.

[00:43:12] Speaker 06:
And they did everything properly to try to add that patently indistinct count, but were blocked by the board.

[00:43:21] Speaker 06:
So they did everything they could possibly do to present a patently indistinct invention into an interference, and the board incorrectly blocked them.

[00:43:31] Speaker 06:
And now they want to try to bring it again.

[00:43:33] Speaker 06:
Are you going to say that they are based on

[00:43:36] Speaker 06:
a board's incorrect determination in the earlier interference?

[00:43:40] Speaker 05:
In that case, I think it would be.

[00:43:42] Speaker 05:
Because there's already been a move.

[00:43:43] Speaker 05:
Would be what?

[00:43:44] Speaker 05:
There would be a stopple.

[00:43:45] Speaker 06:
There would be.

[00:43:45] Speaker 05:
There would be.

[00:43:46] Speaker 06:
Then there's just absolutely no opportunity then in any situation.

[00:43:50] Speaker 05:
I would say they had the opportunity.

[00:43:52] Speaker 05:
In this case, in that hypothetical in the earlier interference, they did have the opportunity.

[00:43:56] Speaker 05:
If the claims or the counts are indistinct, they've already litigated indistinct counts in the earlier interference.

[00:44:04] Speaker 05:
And so if they have indistinct counts later, those issues really have been resolved.

[00:44:10] Speaker 05:
But again, we don't believe that FEARS took all opportunities to try to get the protein counts either into the 096 interference or just as importantly into the second one, the 661 interference.

[00:44:23] Speaker 05:
So FEARS did file a motion in the 096 interference to try to add protein counts.

[00:44:29] Speaker 06:
Did FEARS ultimately get a patent on the DNA claim?

[00:44:34] Speaker 05:
FEARS, yes, well, has not gotten a patent on specifically a DNA claim, no.

[00:44:39] Speaker 05:
FEARS, as I understand it, has gotten patents on certain methods of using the ultimate protein, but not under the underlying DNA claim, no.

[00:44:49] Speaker 05:
Those patents have been granted to Sugano.

[00:44:52] Speaker 06:
The DNA claim?

[00:44:53] Speaker 06:
Yes.

[00:44:54] Speaker 05:
Okay.

[00:44:54] Speaker 05:
Yes.

[00:44:56] Speaker 05:
And so I'll just wrap up with this point about whether they've exercised all their opportunities.

[00:45:03] Speaker 05:
they had the opportunity to add the protein claims in the 096 pattern, in the 096 interference.

[00:45:09] Speaker 05:
They say they tried.

[00:45:10] Speaker 05:
We've shown, I believe, why that was defective.

[00:45:13] Speaker 05:
They further had an opportunity to get protein claims, or at least they should have tried harder to get protein claims into the 661 interference.

[00:45:21] Speaker 05:
This is a whole second interference.

[00:45:23] Speaker 05:
That interference, they were found, again, to be a stop, based on the earlier 096 interference.

[00:45:28] Speaker 05:
They did not try to appeal that.

[00:45:30] Speaker 05:
They did not try a 141 appeal.

[00:45:32] Speaker 05:
They did not try a 146 appeal.

[00:45:34] Speaker 05:
As the board found, Sugano was entitled, in a sense, to feel that these issues had been resolved.

[00:45:44] Speaker 05:
To 661, if not from the 096 interference, certainly by the time the 661 had been resolved and not appealed, these issues were final.

[00:45:52] Speaker 05:
So now we're in a third interference under the same specifications

[00:45:56] Speaker 05:
third bite at the apple.

[00:45:58] Speaker 05:
We believe that the board properly issued the order to show cause, just like it did in the 661, and that fear did not respond properly to the order.

[00:46:08] Speaker 03:
Okay, so unless there are other questions, I think we're out of time.

[00:46:24] Speaker 01:
Morning.

[00:46:24] Speaker 01:
May it please the court, David Berle for Bayer Pharma AG.

[00:46:28] Speaker 01:
This court is sitting at the transferee court from the district court's order transferring Bygen's 146 action here.

[00:46:36] Speaker 01:
There is no appeal from the District of Massachusetts.

[00:46:39] Speaker 01:
There is no final judgment from the District of Massachusetts.

[00:46:41] Speaker 01:
There was no notice of appeal ever filed from the District of Massachusetts.

[00:46:46] Speaker 01:
Bygen comes into this court and asks it to invoke its jurisdiction under 1295A1.

[00:46:50] Speaker 01:
So we were wrong in telling.

[00:46:53] Speaker 01:
No, you were absolutely correct in Tellis.

[00:46:56] Speaker 01:
Tellis was a dismissal for Latin.

[00:46:59] Speaker 03:
We said it shouldn't be treated as a dismissal.

[00:47:02] Speaker 03:
It should be treated as a transfer.

[00:47:03] Speaker 01:
Well, as to the threshold jurisdictional question, which is, in the first instance, what must be confronted by the appeals court, there was absolutely jurisdiction in Tellis under 1295A1.

[00:47:14] Speaker 01:
Once that threshold matter was resolved, it was within the court's discretion to treat the appeal however it wanted.

[00:47:21] Speaker 01:
And the court concluded it should have transferred rather than dismissing the case.

[00:47:25] Speaker 01:
But that threshold question in Tellus had a final judgment.

[00:47:28] Speaker 01:
So jurisdiction could be invoked under 12195A1.

[00:47:32] Speaker 01:
That final judgment is absent here.

[00:47:34] Speaker 01:
And Christensen versus Colt dictates that that threshold jurisdictional question must be assessed.

[00:47:41] Speaker 01:
Is there jurisdiction in this court?

[00:47:43] Speaker 01:
And if the answer to that question is no, this court is powerless to consider the merits.

[00:47:48] Speaker 01:
and the Supreme Court said that all the federal circuit can do at that point is simply dismiss that aspect of appeal.

[00:47:55] Speaker 06:
Do we have power to look at our own jurisdiction?

[00:47:58] Speaker 01:
Yes, that is the only question that this court can answer.

[00:48:03] Speaker 06:
Then doesn't 146 say something like if a 146 action is filed then any

[00:48:09] Speaker 06:
And then you're blocked from going to 141.

[00:48:12] Speaker 06:
The Federal Circuit loses jurisdiction.

[00:48:14] Speaker 01:
That's what Biden's arguing here, that there can't be jurisdiction concurrently in a 146 action and 141 action.

[00:48:21] Speaker 01:
Respectfully, that misreads the jurisdictional analysis under section 1631, which looks to not whether there can now be

[00:48:28] Speaker 01:
concurrent jurisdiction between the Federal Circuit and the District of Massachusetts.

[00:48:32] Speaker 06:
And the point is that there's a legitimate 146th Civil Action that was filed that preempts the Federal Circuit's ability to review that case.

[00:48:42] Speaker 01:
Respectfully, I disagree, Your Honor.

[00:48:43] Speaker 01:
Under section 1631, the question is whether the transferee court is a court in which the action could have been filed at the time it was noticed or filed.

[00:48:54] Speaker 01:
So the question is not.

[00:48:56] Speaker 01:
whether there could be a 141 action now after Biogen has filed this 146 action, but rather whether there could have been jurisdiction in this court under 141 at the time Biogen filed this 146 action.

[00:49:09] Speaker 01:
And the answer to that question unequivocally is yes.

[00:49:12] Speaker 01:
Biogen, in fact, invokes this court's jurisdiction under 1295A4 to review the board's decision in the interference.

[00:49:21] Speaker 01:
That's on page one of its principal brief.

[00:49:24] Speaker 01:
So the only remedy is mandamus?

[00:49:26] Speaker 01:
No, they have several remedies.

[00:49:27] Speaker 01:
At the time that the district court disagreed with Biden, they could have sought certification under section 1292 and asked the district court to certify this question for the federal circuit.

[00:49:38] Speaker 01:
They could have sought mandamus.

[00:49:39] Speaker 01:
They could have taken a dismissal, as in TELUS, and simply either relied on TELUS or filed a prophylactic appeal under 141.

[00:49:48] Speaker 03:
A dismissal which we said was improper.

[00:49:50] Speaker 01:
A dismissal which was reviewable and that would have given this court the opportunity to review the underlying action of the district court as it did in TELUS.

[00:50:01] Speaker 01:
But Biden didn't want to take a dismissal.

[00:50:04] Speaker 01:
It didn't want to have some risk for whatever strategic reason that it would be dismissed.

[00:50:09] Speaker 01:
One can't ask the district court to avoid dismissal and rather transfer and then have the benefit of appeal of the underlying decision.

[00:50:18] Speaker 01:
Biden chose not to have a final order.

[00:50:20] Speaker 01:
Biden chose to be postured differently than the appellant in TELUS.

[00:50:25] Speaker 01:
And there are consequences to that.

[00:50:26] Speaker 01:
And the consequence is that there's no final order here.

[00:50:29] Speaker 01:
And the law is clear that the absence of a final order divests this court of jurisdiction under 1295A1.

[00:50:35] Speaker 03:
OK.

[00:50:36] Speaker 03:
I think, Mr. Brell, we're out of time on it.

[00:50:38] Speaker 03:
Thank you very much.

[00:50:39] Speaker 03:
Thank you, Greg.

[00:50:42] Speaker 00:
Mr. Olive.

[00:50:42] Speaker 00:
Mr. Fig.

[00:50:43] Speaker 03:
Oh, Mr. Fig.

[00:50:46] Speaker 03:
Mr. Figg, I'm sorry, Mr. Figg.

[00:50:50] Speaker 03:
Going back in time.

[00:50:52] Speaker 03:
I'll give you another minute.

[00:50:53] Speaker 03:
Thank you, Your Honor.

[00:50:56] Speaker 02:
I want to go back briefly to the subject matter jurisdiction issue.

[00:51:00] Speaker 02:
I think counsel made a very significant concession to one of the court's questions, which was what if 6F3C were not there?

[00:51:09] Speaker 02:
Would 3 and 1 then provide the avenue for

[00:51:13] Speaker 02:
a judicial review, and he said, yes, in that situation it would.

[00:51:18] Speaker 02:
Well, let's really analyze the argument they're making.

[00:51:22] Speaker 02:
First of all, their analysis of these two sections leads to two different dates that they say judicial review was eliminated.

[00:51:31] Speaker 02:
They say on March 16, 2013, when the Section 3 amendments came into effect, that swept away the old version of the laws.

[00:51:42] Speaker 02:
there was no opportunity for appeal for interferences declared after that date.

[00:51:47] Speaker 02:
But then they say, look at 6F3C.

[00:51:49] Speaker 02:
6F3C by negative implication says there was no right to judicial review for interferences declared after September 16, 2012.

[00:52:00] Speaker 02:
A construction that gives you two separate dates, it can't be a correct construction.

[00:52:07] Speaker 02:
And the latter point is the main argument they make.

[00:52:11] Speaker 02:
6F3C by negative implication eliminated all judicial review for interference is declared after September 16, 2012.

[00:52:19] Speaker 02:
I think we need to test that.

[00:52:23] Speaker 02:
And we can show that that's not true.

[00:52:27] Speaker 02:
Let's say that the interference was declared on October 1, 2012, after September 16.

[00:52:33] Speaker 02:
And it basically ran the same course as the case we have here.

[00:52:37] Speaker 02:
And so on March 1, a final decision is entered by the

[00:52:41] Speaker 02:
Patent Office Board, and on March 2nd, the losing party brings an action for 146 review.

[00:52:51] Speaker 02:
At that time, Section 146 had not been amended.

[00:52:55] Speaker 02:
It gave the applicant the right to bring that 146 action.

[00:53:00] Speaker 02:
No one can dispute that.

[00:53:02] Speaker 02:
The 146 at that point said BPAI, but 7A was in effect at that time.

[00:53:09] Speaker 02:
and said you treat BPAI as if it said PTAB.

[00:53:14] Speaker 02:
And so we can demonstrate that the core of their case, that 6F3C eliminated the opportunity for judicial review of everything declared after September 16, 2012, is just wrong.

[00:53:31] Speaker 02:
Now the only difference between that hypothetical and the case we have here is that

[00:53:37] Speaker 02:
This case was declared in July of 2013.

[00:53:41] Speaker 02:
So it was after those Section 3 amendments took effect.

[00:53:44] Speaker 02:
That's why the shall apply language is so important.

[00:53:49] Speaker 02:
The 3M1 says the amendments of Section 3 shall apply to applications after March 16, 2013.

[00:54:01] Speaker 02:
So I think it all fits together.

[00:54:03] Speaker 02:
6F3C does not alter

[00:54:06] Speaker 02:
that it simply was Congress's way of saying, we didn't fix all the problems with three and one, because we still have a problem with interferences that were pending when these changes came into effect in September of 2012.

[00:54:19] Speaker 02:
We need to fix that, and they fixed that with 6F3C.

[00:54:24] Speaker 02:
Can I just comment very briefly, Your Honor, on this court's jurisdictional?

[00:54:30] Speaker 02:
Yeah, go ahead.

[00:54:31] Speaker 02:
Yeah, I think the problem is,

[00:54:36] Speaker 02:
The basic, the appellee side cases that say transfer order is an interlocutory appeal and it's not an interlocutory order and it's not normally appealable because the case will continue in another court.

[00:54:52] Speaker 02:
It doesn't end the case, it simply moves it to a different court.

[00:54:55] Speaker 03:
Your point is it's not an interlocutory appeal.

[00:54:57] Speaker 02:
It's not because here there's no question the district court buys

[00:55:04] Speaker 02:
literal words, said, I'm granting the motion to dismiss.

[00:55:09] Speaker 02:
And what it did was it dismissed the civil action that Biogen brought not to be carried on in another court.

[00:55:18] Speaker 02:
This court is not going to supervise discovery or hold an evidentiary hearing.

[00:55:24] Speaker 02:
That 146 action was gone forever once the Massachusetts court dismissed it.

[00:55:34] Speaker 02:
a final decision, 1295A1 does give this court authority to review it just as this court did in the Telus case.

[00:55:43] Speaker 02:
And as we pointed out in our reply brief, 1631 also gives this court the power to send it back because if we were right and if the district court

[00:55:55] Speaker 02:
did have jurisdiction over the 146 case, then this court doesn't have jurisdiction over the 141 case.