[00:00:00] Speaker 08:
Before we begin our proceedings for this morning, I'd like to turn to Judge Hughes with a motion.

[00:00:12] Speaker 04:
I have an admission this morning.

[00:00:14] Speaker 04:
One of my law clerks, Emily Sodder, who's been with me for a year now and has done an outstanding job.

[00:00:19] Speaker 04:
Although I'm sorry to lose her, I'm sure she's happy to restart her career, I guess.

[00:00:26] Speaker 04:
She came from a law firm and took some time out to clerk for me.

[00:00:29] Speaker 04:
She's done an outstanding job.

[00:00:31] Speaker 04:
So I'm happy to move her admission.

[00:00:34] Speaker 04:
I move the admission of Emily Kay Soder, who is a member of the bar and is in good standing with the highest court of California.

[00:00:41] Speaker 04:
I have knowledge of her credentials and am satisfied that she possesses the necessary qualifications.

[00:00:48] Speaker 08:
I'm happy to grant the motion, understand you have a very exciting week going on here and we congratulate you on your service and on your personal

[00:01:00] Speaker 02:
Okay, first case this morning is 1-4-1476, G.G.

[00:01:20] Speaker 08:
Searle versus Lupin.

[00:01:25] Speaker 08:
Good morning.

[00:01:25] Speaker 03:
Good morning.

[00:01:26] Speaker 03:
Thank you Chief Judge Crost, Cannon, Shanmugam of Williams and Connolly for the Pfizer repellents.

[00:01:31] Speaker 03:
May I please the court, when Pfizer first applied for the patents that was later reissued, it made an honest mistake.

[00:01:39] Speaker 03:
It believed that regardless of whether it filed its application as a continuation in part or a divisional, it would be entitled to invoke the safe harbor against invalidation for double patented.

[00:01:50] Speaker 03:
Now to be sure that belief was incorrect, but where as here an applicant makes

[00:01:55] Speaker 03:
a choice in prosecution based on a mistaken belief about the law.

[00:02:00] Speaker 08:
How would you, what are the parameters of a mistaken belief?

[00:02:03] Speaker 08:
For example, is it new or should have known?

[00:02:07] Speaker 08:
Do we have to look at the reasonableness of that mistake?

[00:02:11] Speaker 08:
Or what if somebody just really made an absolute error?

[00:02:14] Speaker 08:
They didn't catch the 2008 Pfizer case when they were doing their research and did the same thing tomorrow as you did earlier on.

[00:02:20] Speaker 03:
Chief Judge Prost, we believe that at a minimum where the applicant

[00:02:25] Speaker 03:
both possesses an honest but mistaken belief about the law, and that belief was reasonable at the time.

[00:02:33] Speaker 03:
But that error, based on a mistake in law, is correctable in reissue.

[00:02:37] Speaker 03:
So in our view, at a minimum, where you satisfy both a subjective component and an objective component, you are entitled to reissue, consistent with the language of the reissue statute and that statute's broad remedial purpose.

[00:02:50] Speaker 03:
Now here, taking a look at the record as it exists on summary judgment,

[00:02:55] Speaker 03:
All that there is in the record concerning our subjective belief is the statement of the patent prosecutor, and it can be found at page 7122 of the appendix, that he believed at the time of the 113 application and the earlier PCT application that the section 121 safe harbor, in fact, would apply.

[00:03:13] Speaker 03:
And we certainly believe that that is sufficient to satisfy the subjective component of the analysis, at least for purposes of a motion for summary judgment.

[00:03:21] Speaker 08:
But this isn't a case where he files the same application and calls it a CIP versus a divisional.

[00:03:28] Speaker 08:
And some of the cases refer to this term of art, which is a choice was made, a choice which was beneficial to your client.

[00:03:37] Speaker 08:
you did the same thing, you just labeled it a different way and that was your mistake of law, right?

[00:03:42] Speaker 08:
Does that make a difference?

[00:03:43] Speaker 03:
There's no doubt, Chief Judge Prost, that what we did here was deliberate because I could hardly argue that it was Scrivener's error to file a CIP application and to include new matters.

[00:03:53] Speaker 03:
So to the extent that Pfizer decided to file

[00:03:55] Speaker 03:
a CIP rather than solely a divisional application.

[00:04:00] Speaker 03:
That was clearly deliberate.

[00:04:01] Speaker 04:
Now this court has made clear that the mere fact that... Wasn't the CIP filed before the examiner even made the objection?

[00:04:10] Speaker 04:
The timeline here is tricky, but my understanding is the first CIP was filed even before the examiner required that.

[00:04:19] Speaker 03:
So that is certainly true with regard to the 629 application.

[00:04:23] Speaker 03:
And the history of this is admittedly quite complex.

[00:04:25] Speaker 04:
But everything descends from that.

[00:04:29] Speaker 03:
Well, we certainly claim priority through the 629 application, Judge Hughes.

[00:04:34] Speaker 04:
So let me start with that.

[00:04:35] Speaker 04:
I mean, do you agree then that the 629 wasn't filed in response to the examiner?

[00:04:43] Speaker 04:
requiring these things?

[00:04:45] Speaker 03:
We do, but that is true only with regard to the 629 application.

[00:04:49] Speaker 03:
And so just to be clear sort of what this application is, Judge Hughes, because again, I admit this is all somewhat confusing.

[00:04:55] Speaker 03:
The 629 application was an application that was filed before the relevant restriction requirement.

[00:05:01] Speaker 03:
And it was itself a CIP that claimed only a single additional compound, actually a veterinary drug by the name of Dirac Toxib.

[00:05:09] Speaker 03:
The restriction requirements then issued and it was after the restriction requirement that Pfizer filed the PCT application and then the national stage 113 application that Pfizer is now seeking to correct and reissue.

[00:05:23] Speaker 03:
So just to be clear, we did claim priority through the 629 application back to the parent 594 application, but that was simply because we wanted to claim that additional compound as well as admittedly a bunch of other new matters.

[00:05:38] Speaker 03:
All which is to say that there's no dispute, to get back to Chief Judge Pro's question, that we wanted to file a CIP.

[00:05:45] Speaker 03:
But with regard to this question of whether there was a strategic choice, there's no evidence that we considered the relevant alternative for present purposes, which was filing both a CIP claiming the new matter and a divisional claiming the old matter.

[00:05:59] Speaker 03:
And if we had done that, there's no question that we would have been entitled to the safe harbor for the old matter

[00:06:06] Speaker 03:
if in fact the divisional had issued.

[00:06:08] Speaker 03:
In other words, if we had been sensitive to the safe harbor issue at the time of the earlier application, that would have been a way for us to have our cake and to eat it too, to claim the new matter and get protection for the new matter in a separate CIP, but also get the benefit of the safe harbor, precisely because the prosecutor believed that the safe harbor would be applicable regardless of the label attached to the application.

[00:06:33] Speaker 03:
And I would respectfully submit that although we were ultimately proved to be wrong by this court's 2008 decision, there was an ample basis at the time to believe that the safe harbor would be available.

[00:06:44] Speaker 03:
There's no evidence that Pfizer even considered that alternative.

[00:06:47] Speaker 03:
And so for purposes of what we believe is the appropriate standard here, we believe, number one, that the only evidence in the record indicates that we had an honest belief

[00:06:56] Speaker 03:
that we would be entitled to the safe harbor, and number two, that that belief was reasonable at the time we made the decision.

[00:07:01] Speaker 08:
Can I ask you, besides Dinsmore and the language in Dinsmore, not necessarily the holding, what's your best case for saying that a mistake of law is an error under the reissue statute?

[00:07:13] Speaker 03:
So, obviously, we start from the proposition that the language of the reissue statute itself is broad and does not carve out

[00:07:21] Speaker 03:
mistakes of law or single them out for differential treatment.

[00:07:23] Speaker 03:
And I think that certainly is consistent with the way that this court characterized the standard in Dinsmore and Fleming.

[00:07:28] Speaker 03:
Now, we find a variety of cases, most of them pre-Federal Circuit cases, in which mistakes of law have been corrected, the Moist Cold Refrigerator case and the Roman Haas case.

[00:07:38] Speaker 08:
Yeah, and those weren't really persuasive to me.

[00:07:40] Speaker 08:
Those were really quite radical, like passage of the Pat Naft.

[00:07:43] Speaker 08:
I mean, those don't seem to really

[00:07:45] Speaker 08:
fought on the kind of scenario we're in.

[00:07:47] Speaker 03:
Well, and that's how appellees try to distinguish those cases.

[00:07:50] Speaker 03:
They say, look, these are cases that involve more dramatic changes in the law.

[00:07:55] Speaker 03:
And I don't dispute that if you take, for instance, the Roman Haas case where you had the passage of the 1952 Patent Act, that that was a sort of black and white.

[00:08:04] Speaker 08:
So are there cases that are closer to the scenario here in terms of the alleged mistake of law?

[00:08:09] Speaker 03:
Well, I think what I would say about the cases that are out there involving mistakes of law

[00:08:14] Speaker 03:
is that those cases in no way frame the standard in terms of the degree to which an intervening decision constitutes a departure, a change in the law, as opposed to a clarification.

[00:08:26] Speaker 03:
Those cases, and I think we have cited between us the principle cases that are out there, frame the standard in terms of a sort of failure to foresee the subsequent decision, really without regard to whether it is a watershed change in the law or a mere clarification.

[00:08:43] Speaker 03:
Now here I think we would argue that this court's decision in 2008, if not a dramatic change in the law, was arguably a little bit in tension with these prior cases that we relied on that seemed to assume the availability of the safe harbor even for other types of continuation.

[00:09:00] Speaker 03:
application.

[00:09:01] Speaker 03:
And this court in its 2008 decision recognized as much when it talked about those cases and noted that those cases had seemingly assumed that, but that those cases had not.

[00:09:11] Speaker 08:
Well, except when you read the opinion in its entirety, it seems it's pretty strong that you're wrong.

[00:09:16] Speaker 08:
And then they respond as they should have because you raised those other cases, so they tried to deal with them.

[00:09:22] Speaker 08:
But I think when you read the opinion in its entirety,

[00:09:25] Speaker 08:
doesn't appear that it was a close call, right?

[00:09:28] Speaker 03:
Well, you know, I would, of course, not surprisingly, I would respectfully disagree.

[00:09:32] Speaker 03:
But at the same time, I'm not here to relitigate an oral argument that took place at least seven years ago.

[00:09:37] Speaker 03:
I would say that I think part of the reason why it was a reasonable assumption was that although the statute speaks in terms of divisional applications, there was no affirmative evidence that Congress was using that term in the term of art sense that the Patent Office does.

[00:09:55] Speaker 03:
The different types of continuation applications are defined not by statute, but defined in the MPEP.

[00:10:01] Speaker 03:
There was, I think, a very good policy argument as to why Congress would not have wanted to draw that distinction.

[00:10:07] Speaker 03:
All which is to say that I'm not attempting to convince the court that its earlier decision was incorrect.

[00:10:13] Speaker 03:
I'm simply making the point that it would have been reasonable at the time to believe that the safe harbor would have been available.

[00:10:19] Speaker 08:
Now to be sure- The use of the Safe Harbor 121 depends on codependency, correct?

[00:10:26] Speaker 03:
Well, there certainly is a separate specific codependency requirement in Section 121.

[00:10:32] Speaker 03:
And Judge Allen did not address the applicability of the Safe Harbor in her opinion.

[00:10:39] Speaker 03:
She simply concluded that the patent had not validly reissued, and she did indicate that the patent, if it had validly issued, would be

[00:10:47] Speaker 03:
invalid for obviousness type double patenting, but she did not address the arguments that appellees are now making about the as a result of requirement and the timing of the divisional application.

[00:10:58] Speaker 03:
So we certainly think.

[00:10:59] Speaker 07:
Yeah, if you can address that question with specificity, if you could focus on why it is that the or is it the case?

[00:11:11] Speaker 07:
I think you will tell us that it's not, but it's the case that I guess that

[00:11:15] Speaker 07:
319 reissue application, which has confidence, clearly as a result of tight consonance, lacks co-pendency with the 165 patent, and the 113 application, which has co-pendency, lacks confidence.

[00:11:36] Speaker 07:
That seems to me on that part of the case, admittedly not a part that the district court addressed, but nonetheless on that part of the case argued here,

[00:11:44] Speaker 07:
to be the problem that you face.

[00:11:46] Speaker 03:
Sure, and I will address the substance of both of those points, but let me just say that we really do think that there's no reason for this Court to deviate from the ordinary practice of leaving out.

[00:11:54] Speaker 07:
I understand that.

[00:11:56] Speaker 07:
Moving past that point.

[00:11:57] Speaker 03:
And that's particularly true, Judge Bryson, because there are other issues that would need to be resolved on remand anyway in this case, which is to say that the relief that we're seeking here is simply to vacate the order

[00:12:08] Speaker 03:
granting summary judgment to appellees and to remit for the proceedings.

[00:12:11] Speaker 03:
And there are 112 issues and other issues that are still.

[00:12:14] Speaker 03:
Right.

[00:12:14] Speaker 07:
But I think this issue itself looks to me like, correct me if I'm wrong, a pure question of law.

[00:12:20] Speaker 03:
It is a pure question.

[00:12:20] Speaker 07:
There is no dispute of fact.

[00:12:22] Speaker 03:
It is a pure question of law that this court has the power to resolve.

[00:12:25] Speaker 03:
So let me address the merits of those arguments directly.

[00:12:27] Speaker 03:
And I think there are really two arguments that appellees are making, as I indicated to Chief Judge Prost.

[00:12:32] Speaker 03:
The first is the argument concerning the as a result of requirements.

[00:12:37] Speaker 03:
And with regard to that requirement, our submission is quite straightforward.

[00:12:41] Speaker 03:
With regard to the application for the patent at issue here, the divisional application, we believe that any as a result of that requirement is satisfied where the claims at issue are claims that could have been pursued in the parent application, but for the restriction requirement.

[00:13:01] Speaker 07:
And we believe that that interpretation of- No, to make sure I'm on the same page with you.

[00:13:07] Speaker 07:
Which application are you specifically referring to now?

[00:13:10] Speaker 07:
You're not referring, or are you referring to 319?

[00:13:13] Speaker 03:
I'm referring to the 319.

[00:13:14] Speaker 03:
You are referring to 319.

[00:13:15] Speaker 03:
So I'm referring to the app, which is, to be clear, the application for the patent that is here, the reissued patent, the 048 patent.

[00:13:22] Speaker 07:
But that's the application that has the copendency problem.

[00:13:26] Speaker 03:
Well, and I'm happy to address the argument with regard to the timing of that application.

[00:13:32] Speaker 03:
But for purposes of the as a result of requirement, I just want to be clear.

[00:13:36] Speaker 03:
that in our view, it is the mere fact that we claim priority through another application that was not filed as a result of the restriction requirement, the 629 application, does not somehow entail the conclusion that we don't satisfy the as a result of requirement.

[00:13:53] Speaker 03:
To the extent that this Court has addressed that requirement with regard to the downstream application, here the application for reissue patents, the Court has made clear most recently in the Boehringer case

[00:14:03] Speaker 03:
that what is required is simply that the claims be claims that would have been pursued in the parent, but for the restriction requirement.

[00:14:09] Speaker 03:
And I would respectfully submit that that is entirely consistent with the policy behind the safe harbor, because after all, the whole point of the safe harbor is to avoid penalizing someone for pursuing claims that could have been pursued in the parent, but for the restriction requirement.

[00:14:22] Speaker 03:
Okay.

[00:14:23] Speaker 08:
What about the co-pendency requirement if the divisional application is filed before the issuance of the patent?

[00:14:28] Speaker 03:
Sure.

[00:14:28] Speaker 03:
So just to be clear as to how we think that requirement works.

[00:14:32] Speaker 03:
We think that the relevant application here, the divisional application is obviously the application for the reissue patent, which is to say the 319 application.

[00:14:40] Speaker 03:
Now to be sure, that application was filed in 2008.

[00:14:43] Speaker 03:
So as a strictly chronological matter, it was clearly filed well after the 165 patent, the patent that is being used as the reference here, issued.

[00:14:55] Speaker 03:
All that we are arguing, Judge Bryson, is that we should be entitled to the same legal fiction that applies to reissued patents generally as a result of Section 252, which is to say that when you get a reissued patent, it is as if that patent issued from the original application for the patent that was deemed to be invalid.

[00:15:15] Speaker 03:
And so just to give you a sense of how I think that would work in the ordinary context, stripping away all of the procedural complexity of this particular case.

[00:15:25] Speaker 03:
Suppose that a patentee filed a timely divisional application in the wake of a restriction requirement and that patent which issued was copendent and satisfied the ordinary Section 120 copendency requirement and then was invalid for some technical reason.

[00:15:44] Speaker 03:
I don't think that there's any doubt that if the patentee sought to correct an error that was unquestionably correctable in a reissue

[00:15:51] Speaker 03:
that they would continue to have the benefit of the earlier filing date of the original application under Section 120.

[00:15:58] Speaker 03:
And again, that's simply because of the operation of Section 252.

[00:16:02] Speaker 03:
And this legal fiction, and it's a fiction created by statute, that you treat the reissued patent as if it had been issued from the original application.

[00:16:12] Speaker 08:
And I would know- But isn't Orita, doesn't that fly in the face of Orita?

[00:16:15] Speaker 08:
I mean, Orita has some very strange

[00:16:18] Speaker 08:
straightforward language.

[00:16:19] Speaker 08:
The fact pattern there was simpler, but it does talk about not being able to cure everything and the relationship between the 120 and 121.

[00:16:27] Speaker 03:
But Arita, I would respectfully submit, Chief Judge Crost, deals with a somewhat different question, which is the propriety of reissue under Section 251.

[00:16:36] Speaker 03:
And Arita simply stands for the proposition that when you have not pursued the claims at issue in a co-pendant fashion, you can't, after the fact,

[00:16:47] Speaker 03:
circumvent the co-pendency requirement by coming back and seeking to overcome the prior restriction requirement by, say, reissuing the original patent.

[00:16:57] Speaker 03:
We're not trying to do that here.

[00:16:58] Speaker 03:
And to get back to Judge Hughes' question, precisely because there is no dispute that we pursued the relevant claims in a co-pendent fashion.

[00:17:06] Speaker 03:
The relevant method of treatment claims here were pursued co-pendently in

[00:17:12] Speaker 03:
the PCT application and then in the 113 application as well before the 165 patent that's being used as the reference ultimately issued.

[00:17:22] Speaker 03:
And so here there's no question that we pursued these claims.

[00:17:27] Speaker 03:
The problem, as the 2008 decision made clear, is that we pursued them in the wrong type of application.

[00:17:33] Speaker 03:
And that's why we think that the ARITA cases are distinguishable

[00:17:36] Speaker 03:
for purposes of determining the propriety of reissue, my point for present purposes is simply that for purposes of the separate co-tenancy requirement in Section 121, all you have to do is apply the ordinary rule that you treat the reissued patent as if it issued on the original application.

[00:17:53] Speaker 08:
I would like to reserve the balance of my time.

[00:17:55] Speaker 08:
Thank you.

[00:17:59] Speaker 08:
All right.

[00:17:59] Speaker 08:
We've got a split argument here.

[00:18:03] Speaker 08:
We're going to clock you each separately, but just hopefully be mindful of the fact that we don't want to run over anything.

[00:18:10] Speaker 01:
That's correct, Your Honor.

[00:18:11] Speaker 01:
So may it please the court.

[00:18:12] Speaker 01:
I'm Steve Lawton, here on behalf of Apotec Corp and Apotec Inc.

[00:18:15] Speaker 01:
As you recognize, we do want to split the issues up three ways, and we want to do that in line with how the issues were presented to the court below.

[00:18:21] Speaker 01:
I'm going to take five minutes and cover why 251, you cannot use reissue to cure the defect or failure to file a divisional application.

[00:18:29] Speaker 01:
My counsel, Ms.

[00:18:30] Speaker 01:
Jacob, here, my co-counselor, Ms.

[00:18:31] Speaker 01:
Jacob for Lupin, will cover 251, cannot be used to cure intentional acts made during prosecution, and that every other error must be independently correctable under 251.

[00:18:41] Speaker 01:
And then the balance of the time will be argued by Mr. Karsten here, arguing that even if the reissue were proper, the patent is still invalid because it was not filed as we were just discussing, as you were just discussing earlier, not in response, the application was not filed in response,

[00:18:55] Speaker 01:
to a restriction requirement and therefore is not available for the safe public protection under 121.

[00:19:02] Speaker 01:
So during that issue, I mentioned that this case is actually on black letter law, as you recognize, that you cannot use the reissue statute to cure the failure to file a divisional application.

[00:19:12] Speaker 01:
And that comes right out of the three cases that are in the briefs here, the, excuse me, the Weiler, the Watson, and the Aretha cases that we were talking about.

[00:19:20] Speaker 01:
And it's not all forced with the same fact pattern here.

[00:19:22] Speaker 04:
But suppose here, instead of filing

[00:19:25] Speaker 04:
a continuation that included new matter.

[00:19:28] Speaker 04:
They had for some reason filed a continuation instead of a divisional, even though it didn't include new matter.

[00:19:35] Speaker 04:
Why wouldn't that be correctable under 251?

[00:19:38] Speaker 01:
Because of the strict requirement under 121.

[00:19:40] Speaker 01:
And so what they should have done is they recognized this by the divisional application.

[00:19:44] Speaker 04:
And what 121... Sure, but let's assume, I'm trying not to muddle the issues, but let's assume

[00:19:50] Speaker 04:
that it was unclear whether 121 covered divisionals and continuations or just divisionals.

[00:19:56] Speaker 04:
And so going forward after that decision, I think nobody has an argument.

[00:20:00] Speaker 04:
But for that decision, if they filed a continuation that they meant to file as a divisional, it contained no new matter, why wouldn't that be correct?

[00:20:10] Speaker 01:
Well, because here they made a deliberate choice and received a benefit for that deliberate choice, Your Honor.

[00:20:14] Speaker 04:
OK, but that's not the question I'm asking you.

[00:20:16] Speaker 04:
Because I understand they made a deliberate choice here because they wanted to add new matters.

[00:20:20] Speaker 04:
But suppose they hadn't, and they had merely, let's just assume they just merely misdescribed it as a continuation instead of intending to mark it as a divisional.

[00:20:30] Speaker 04:
And because of that, they didn't get the safe harbor provision.

[00:20:34] Speaker 04:
Why couldn't they go back and get a reissue saying this was really meant to be a divisional?

[00:20:38] Speaker 04:
That was an error of law in the way we looked at it, and you should reissue it.

[00:20:42] Speaker 01:
Well, I think that, well, those are different facts that are before the court right now.

[00:20:46] Speaker 01:
And here they had to understand.

[00:20:48] Speaker 04:
What's your answer to that hypothetical?

[00:20:50] Speaker 04:
Would that be correctable under 251?

[00:20:52] Speaker 01:
That may perhaps be correctable under those particular circumstances here.

[00:20:56] Speaker 01:
But, and this dovetails with the issue of whether they had a misunderstanding of the law at the time.

[00:21:00] Speaker 01:
And that's wrong for three reasons.

[00:21:02] Speaker 01:
One, 251 is clear on its face that requires a divisional application.

[00:21:06] Speaker 01:
Two, it runs contrary to law at the time with the Watson, excuse me, the Wyler, the Watkinson, or Rita cases.

[00:21:13] Speaker 01:
And it's also belied by their own actions and prosecutions.

[00:21:16] Speaker 01:
I knew very well the difference between a CIP and a divisional application and intentionally chose to file this as a CIP to get the benefits of filing it as a CIP.

[00:21:24] Speaker 08:
Well, the benefits, yeah, but that's not just used hypothetical.

[00:21:28] Speaker 08:
What benefits if they had filed just the matter that's otherwise covered under the restriction requirement?

[00:21:34] Speaker 08:
And that was all that was included in the filing.

[00:21:37] Speaker 08:
What benefit would they have been deriving by filing this CIP as opposed to a divisional?

[00:21:42] Speaker 01:
Well, the benefits they got here from filing this CIP versus divisional was that it led to three additional patents that they've gotten to cover subject matter that was derived from that new matter added to the prosecution.

[00:21:51] Speaker 08:
Yeah, but the hypothetical in mind.

[00:21:52] Speaker 01:
Okay.

[00:21:54] Speaker 01:
That was the new matter that they got.

[00:21:55] Speaker 01:
So, you know, our position is that they did not have a reasonable lease at the time.

[00:21:59] Speaker 01:
And Judge Post, you asked the question, what's the standard?

[00:22:01] Speaker 01:
What should we apply here?

[00:22:02] Speaker 01:
Well, number one, they definitely should have known based on that standard and following from the Henry Mead case, they should have known at that risk of filing it as a CIP as opposed to a divisional.

[00:22:13] Speaker 08:
What about if in our opinion in Pfizer in 2008, we had started off by saying, you know, guys, this is a really close case.

[00:22:20] Speaker 08:
And the law has been unclear up until this point, but here it is, and we're going to decide it this way.

[00:22:26] Speaker 08:
Would that change your view?

[00:22:28] Speaker 01:
That may change the view, but I don't think it undoes the three decisions earlier.

[00:22:31] Speaker 01:
It was very clear that you cannot use reissue to cure the failure to file a divisional application.

[00:22:37] Speaker 01:
That was clear long before 2008.

[00:22:39] Speaker 01:
You have the decisions from those cases from the 60s, the 70s, and the 80s.

[00:22:44] Speaker 01:
So a long tenure of jurisprudence, but that's been the rule for a long time.

[00:22:48] Speaker 04:
And that's why... Were those cases where somebody failed to fire a divisional and filed a continuation instead, or just where they failed to file a divisional at all?

[00:22:58] Speaker 04:
and realize after the fact that they didn't need to.

[00:23:00] Speaker 01:
Well, I think that I'm not aware of a case like that, Your Honor, where I am aware of where you usually issue to perfect priority claims.

[00:23:06] Speaker 01:
You can do that when it's clear from the overall record.

[00:23:09] Speaker 01:
And I see that my time is expiring when I finish my answer.

[00:23:12] Speaker 01:
Yes.

[00:23:13] Speaker 01:
So it's from those cases are incidents where you're trying to perfect the priority claim in the overall context of what was intended there.

[00:23:19] Speaker 01:
And what we have here is a very different scenario because we know what they intended.

[00:23:23] Speaker 01:
They perfectly intended to file that CIP application to get that benefit of the new matter.

[00:23:27] Speaker 01:
And are now trying to undo that error and now regret that choice because they did not have the safe harbor available.

[00:23:32] Speaker 01:
Okay.

[00:23:33] Speaker 08:
Thank you.

[00:23:33] Speaker 08:
Thank you, Mr. Jacob.

[00:23:41] Speaker 06:
May it please the court?

[00:23:42] Speaker 06:
My name is Beth Jacob of Kelly Dry and Warren representing the Lupin Pharmaceutical Defendant.

[00:23:49] Speaker 06:
I will jump right to one of the questions, which is, is there a case out there which is close on the facts closer than Dinsmore?

[00:23:55] Speaker 06:
And there is.

[00:23:56] Speaker 06:
It's an old one.

[00:23:57] Speaker 06:
It's Whittlesley, which is, I think, from 1936, but has been cited by this court much more recently.

[00:24:02] Speaker 06:
In Whittlesley, the applicant misunderstood the law, thought he was only allowed to claim one species in a genus instead of more than one species, had a patent claiming only one species.

[00:24:17] Speaker 06:
After the patent issued, recognized that this was a mistake, that the law had changed, and he was now entitled to claim up to three species.

[00:24:24] Speaker 06:
went for reissue to try to change that and predecessor to this court ruled no, you intended not to claim what you didn't claim and the fact it was a mistake of law doesn't save you.

[00:24:35] Speaker 06:
So that was the closest one we could find on the facts where it was a mistake of law but they were held to the mistake of law because the act that they intended to do where the mistake was not within what they tried to include in the patent

[00:24:50] Speaker 06:
I think that we would phrase the question a little bit differently.

[00:24:53] Speaker 06:
It's not a question of whether there was an error or an unintended consequence.

[00:24:57] Speaker 06:
The question is, did they intend to do what they did?

[00:25:00] Speaker 06:
They intended to get a CIP.

[00:25:01] Speaker 06:
They got a CIP.

[00:25:04] Speaker 06:
They did not intend an invalid patent.

[00:25:06] Speaker 06:
Nobody intends an invalid patent, or almost nobody intends an invalid patent.

[00:25:10] Speaker 06:
So if this court rules that the fact that you make an error of judgment, that you misread the law, whatever it is, you do what you intend to do, you do the strategy you intend to do,

[00:25:20] Speaker 06:
But nevertheless, the consequences are an invalid patent.

[00:25:24] Speaker 06:
Then reissue is no longer a relatively narrow, equitable standard.

[00:25:29] Speaker 06:
But virtually every time a patent is invalidated on a question of law, it is merely a step toward reissue.

[00:25:34] Speaker 06:
And we think, in terms of parameters, that's, I'm sorry.

[00:25:37] Speaker 07:
Go ahead.

[00:25:38] Speaker 06:
You can finish.

[00:25:38] Speaker 06:
That just is too broad.

[00:25:40] Speaker 06:
The parameters here to answer the first question, I think, is one, black letter, failure to file a timely divisional cannot be cured regardless of the clause.

[00:25:49] Speaker 06:
And second, an intentional strategy and an act, you have to live with those consequences.

[00:25:54] Speaker 07:
Well, the problem that I have with the intentional act argument, and it depends, I guess, on exactly how we define that term.

[00:26:03] Speaker 07:
But the Dinsmore case seems to address specifically the problem that, of course, there are many acts that aren't simply slips of the pen, but are intentional in the sense that they were deliberate.

[00:26:14] Speaker 07:
but they may have been done without cognizance of the consequences, et cetera, and that they therefore may fairly be called mistakes.

[00:26:23] Speaker 07:
How do you define intentional in a way that avoids what Dinsmore was clearly saying is a permissible form of deliberate action for purposes of reissue eligibility?

[00:26:34] Speaker 06:
Well, Dinsmore, if I'm recalling the case, was the terminal disclaimer case.

[00:26:39] Speaker 06:
And in that case,

[00:26:41] Speaker 06:
they were held to the consequences of their terminal disclaimer.

[00:26:44] Speaker 07:
Well, that was the whole thing of Dinsburg.

[00:26:45] Speaker 07:
But what I'm focusing on, the language at... The language we state the fact or the law.

[00:26:51] Speaker 07:
The language says that Section 251 often applies to applicants' choices, i.e., their deliberate decisions about what to say in their patents, not just slips of the pen.

[00:27:02] Speaker 07:
And it goes on to have a little more discussion about that.

[00:27:05] Speaker 07:
But that's the problem that I think I'm having, at least with the intentional conduct

[00:27:10] Speaker 07:
line of argument that you're pressing.

[00:27:12] Speaker 06:
When I was trying to figure out what the parameters of that statement and similar statements were, I wasn't... And you concluded what?

[00:27:19] Speaker 06:
Help us out here.

[00:27:20] Speaker 06:
Well, I had a conclusion, but to try to support it a little more.

[00:27:24] Speaker 06:
When you look at the facts of the cases, for example, you could go into Fleming, and when Fleming is talking not in general, but what happened there, they say this is just a classic mixed misunderstanding of law and fact on underclaiming or overclaiming.

[00:27:37] Speaker 06:
So I think that if you look at the facts, the facts of the cases say it's not enough to not understand the ultimate consequences.

[00:27:45] Speaker 06:
It has to be a mistake in the intentional act.

[00:27:47] Speaker 07:
So you have the cases where, for example... What do you mean by a mistake in the intentional act?

[00:27:52] Speaker 07:
That's the key that's troubling me.

[00:27:55] Speaker 06:
For example, we have the cases where the wrong person signed the declaration.

[00:27:59] Speaker 06:
We have the cases where they didn't file a certified copy of the foreign application on time.

[00:28:04] Speaker 07:
Why isn't that a mistake of the law?

[00:28:06] Speaker 07:
You thought that you didn't have to have that, and it turns out you do.

[00:28:10] Speaker 06:
Well, in those cases, I think it was they just didn't get it done.

[00:28:13] Speaker 06:
It was a mistake.

[00:28:14] Speaker 07:
All right, but suppose that they knew you had to do it.

[00:28:17] Speaker 07:
They didn't know.

[00:28:19] Speaker ?:
Excuse me.

[00:28:21] Speaker 07:
They didn't know how to do it.

[00:28:23] Speaker 07:
That makes it ineligible, but if they didn't do it, actually it's eligible?

[00:28:28] Speaker 06:
Because what they intended to do was to file an application that, in that case, had priority before an application, so they intended to accomplish

[00:28:36] Speaker 06:
the filing of that application, they just did it.

[00:28:39] Speaker 06:
They made a mistake in terms of the process.

[00:28:42] Speaker 06:
So if, for example, I have two seconds, but if, for example, if I can just finish, if they had intended to file a divisional and check the PIP box, I think that's a much closer question.

[00:28:54] Speaker 06:
I would still say we have a bright line, failure to file a division.

[00:28:56] Speaker 04:
But that's, I mean, that's more of like a typographical error.

[00:29:00] Speaker 04:
You're not suggesting that 251 is limited to those kind of factual or typographical or clerical errors, are you?

[00:29:06] Speaker 04:
I mean, it's very clear that it doesn't say that.

[00:29:08] Speaker 04:
It goes further.

[00:29:09] Speaker 04:
And even if it's an intentional act, if the intentional act claims more or less that you were entitled to, you can correct it through the reissue statute.

[00:29:18] Speaker 04:
Isn't that right?

[00:29:19] Speaker 06:
And I guess I would respond by looking at the facts of Sarenkin, the facts of Dinsmore, where the

[00:29:26] Speaker 06:
applicant intended to do the act that they did, they did that act properly, and it's not... Well, I understand that.

[00:29:32] Speaker 04:
I don't want to take you too much over your time, but could you address my hypothetical about even if they had intended to file a CIP application but claimed no new matter and thought and had a reasonable belief that that was covered by the safe harbor, why wouldn't that be correctable under the reissue statute?

[00:29:51] Speaker 06:
Well, my first answer to that would be that I think there is a bright line that failure to file a timely divisional cannot be cured regardless, but if that is not persuasive, then I think it's a very close question.

[00:30:07] Speaker 06:
I think it might possibly be changed, but I would still say they intended to file a CIP and therefore the consequences, and they filed a CIP even if

[00:30:16] Speaker 06:
There was no reason for it, but there was nothing wrong with that CIP.

[00:30:19] Speaker 06:
The CIP itself isn't rejected because it failed to add new matter.

[00:30:24] Speaker 06:
It still would be accepted as a CIP.

[00:30:25] Speaker 06:
So the action that they took is the action that they intended to take.

[00:30:29] Speaker 06:
And the fact that there were unforeseen consequences to their patent is not what reissue is supposed to cure.

[00:30:35] Speaker 08:
Thank you.

[00:30:38] Speaker 08:
Mr. Kartzman.

[00:30:40] Speaker 08:
Kartzman.

[00:30:42] Speaker 05:
Good morning, and may it please the court.

[00:30:44] Speaker 05:
Judge Hughes, I'd like to address your hypothetical.

[00:30:46] Speaker 05:
And that is Amgen resolved exactly that question.

[00:30:52] Speaker 05:
So in Amgen, the applicant there had filed a continuation, not a divisional.

[00:30:58] Speaker 05:
And they regretted it.

[00:31:00] Speaker 05:
But this court in Amgen said, no, it's a safe harbor.

[00:31:03] Speaker 05:
And a safe harbor is not open water.

[00:31:07] Speaker 05:
And so using a reissue to try to do that indicates

[00:31:13] Speaker 05:
the limitations of Section 121.

[00:31:16] Speaker 05:
It broadens and violates the very restrictions that were clearly set forth in that statute.

[00:31:24] Speaker 05:
And I submit that if there are any reservations about the question of error or what a party intended or didn't intend, I submit with respect that there are simpler and more easily grounded bases

[00:31:42] Speaker 05:
upon which this court can... Okay, and we're waiting for you to discuss co-pendency, right?

[00:31:46] Speaker 05:
Well, I have three bases, Your Honor.

[00:31:49] Speaker 05:
First is the new matter basis, which the District Court did actually find below.

[00:31:54] Speaker 05:
So if the Patent Office, assuming the case, we don't agree, but if the Patent Office validly reissued the patent, that patent, as it stands today, still contains new matter.

[00:32:06] Speaker 05:
It's still ACIP, despite the fact it has the word divisional on the cover page.

[00:32:11] Speaker 05:
And that's because of the bracket errors that were made.

[00:32:14] Speaker 08:
The district court went the other way.

[00:32:17] Speaker 08:
He cured the bracket errors.

[00:32:19] Speaker 05:
Yes, Your Honor.

[00:32:19] Speaker 05:
The district court, I would disagree marginally, Chief Judge.

[00:32:24] Speaker 05:
The district court found in footnote two that there was one erroneous bracket.

[00:32:28] Speaker 05:
Pfizer has pressed that there are three.

[00:32:31] Speaker 05:
And regardless of what the district court did, and she did not specify how she was going to correct this patent, aside from voila, there is no matter remaining.

[00:32:40] Speaker 05:
We don't know what she did in order to correct those issues.

[00:32:43] Speaker 08:
You know, I'm starting to think that your side doesn't have much confidence in the co-pendency question because we've been waiting for you to address it and you're doing everything but addressing it.

[00:32:53] Speaker 05:
Well, let me go straight to it then, Your Honor.

[00:32:55] Speaker 05:
If you look at the cover page of the reissue 048 patents, you see it says divisional, but let's look at each one of those divisions.

[00:33:05] Speaker 05:
Right?

[00:33:05] Speaker 05:
There is the PCT application.

[00:33:07] Speaker 05:
Notably, Judge Hughes, as you probably noted earlier, the 629, which broke the ability to claim the safe harbor in this line, is no longer apparent.

[00:33:17] Speaker 05:
But that is clearly a CIP.

[00:33:20] Speaker 05:
The PCT application is a CIP.

[00:33:23] Speaker 05:
It was a CIP.

[00:33:25] Speaker 05:
It remains tomorrow a CIP.

[00:33:28] Speaker 05:
The 113 national stage application, it is filed as a CIP.

[00:33:32] Speaker 05:
It contains new matters.

[00:33:34] Speaker 05:
It remains a CIP today.

[00:33:37] Speaker 05:
We know that because Pfizer in their reply brief at page eight said all these applications remain unchanged.

[00:33:43] Speaker 05:
That's their own word.

[00:33:45] Speaker 08:
I know, but your friend, and this may have come up in the reply brief, but fairly so because you raised this in red, referred to 252.

[00:33:52] Speaker 08:
And I'm not sure you've ever explained why the language in 252, which says the reissued patents will have the same effect in operation in law, et cetera, does not allow them to then

[00:34:04] Speaker 08:
go back and sort of retroactively apply the 113 application?

[00:34:08] Speaker 05:
Well, two points on that, Your Honor.

[00:34:10] Speaker 05:
First, the 113 application never was, never will be, and still is not a divisional, despite what the fiction may be.

[00:34:20] Speaker 05:
There was never a divisional application filed in this chain.

[00:34:24] Speaker 05:
Pfizer did file divisional applications.

[00:34:27] Speaker 05:
The 165, for example, that patent, the one that renders this patent invalid, was filed off of a divisional.

[00:34:34] Speaker 05:
Secondly, 252 is not a statute that says for all purposes everywhere in the world, it's the same patent.

[00:34:45] Speaker 05:
It's carefully circumscribed and there are exceptions, including intervening rights.

[00:34:52] Speaker 05:
So to seize upon three or four words from 252 and say, oh, this makes what I've done here, this unprecedented creation of a fictional file history,

[00:35:02] Speaker 05:
which never existed and never has existed and won't exist anywhere else but in the four corners of this courtroom as applied to this patent.

[00:35:11] Speaker 05:
That's not what 252 stands for.

[00:35:15] Speaker 05:
So if I may, Your Honor.

[00:35:16] Speaker 07:
Do you have any case law that is helpful on the specific point that the Chief Judge raised, which is

[00:35:25] Speaker 07:
whether the language from 252 that your opposing counsel cited, they shall have the same effect in operational lies if issued from original patent, would not apply in a case such as this one with respect to the 319 reissue application.

[00:35:42] Speaker 07:
The 319, I guess we can all agree that has consonants for purposes of, if it had been issued directly as a divisional, it would be fine.

[00:35:54] Speaker 05:
I would concur.

[00:35:55] Speaker 07:
So that part of his problem, the only problem I take it with, disagree with me if I'm wrong I hear, but the only problem I take it with the 319 is a problem of co-pendency.

[00:36:06] Speaker 05:
The 319 is exactly, exactly suffers from that co-pendency problem.

[00:36:10] Speaker 07:
Over a decade too late.

[00:36:12] Speaker 07:
Exactly what authority can you point us to that tells us that that co-pendency problem is fatal notwithstanding the language

[00:36:22] Speaker 07:
that your opposing counsel is pointing us to from 252.

[00:36:26] Speaker 05:
So the closest I found, I had the same question.

[00:36:29] Speaker 05:
The closest I found was the case Intel.

[00:36:38] Speaker 07:
exactly analogous.

[00:36:42] Speaker 05:
I'm trying to get a hold of that.

[00:36:44] Speaker 05:
If I can't get it in a timely manner, Your Honor, may I have permission to just supplement something quick with a letter?

[00:36:49] Speaker 07:
Leave a memo or some indication with the clerk before you leave.

[00:36:56] Speaker 05:
Thank you, Your Honor.

[00:36:58] Speaker 05:
I appreciate that.

[00:37:00] Speaker 05:
And in Intel, there was a broad statement or a suggestion that that language

[00:37:08] Speaker 05:
applied for all purposes, and this court went through carefully and looked at the other provisions in 252 and found that the presence of intervening rights and the question of claim scope really did fight significantly into that broad proposition.

[00:37:26] Speaker 05:
I do not believe that 252 saves Pfizer here.

[00:37:32] Speaker 05:
Now, the new matter issue, I believe, is a simple basis

[00:37:38] Speaker 05:
the district court exceeded its authority within the four corners of that patent documents.

[00:37:43] Speaker 05:
One cannot tell that there are three or five or eight brackets, a mix.

[00:37:50] Speaker 05:
The district court's authority to correct errors is narrowly tailored and circumscribed.

[00:37:57] Speaker 05:
That's clear from this court's precedence.

[00:37:59] Speaker 05:
And the district court here exceeded it.

[00:38:01] Speaker 05:
So even leaving aside the question of the propriety of the reissue, there's a narrow basis upon which

[00:38:07] Speaker 05:
This court could affirm the district court's decision, and one that the district court expressly addressed below.

[00:38:12] Speaker 05:
No need for remand, no disputed facts.

[00:38:15] Speaker 05:
With respect to the failure to file a divisional application at all, and there is no divisional application that's been filed in this chain at all.

[00:38:24] Speaker 05:
You have the 629, as Judge Hughes pointed out earlier, which broke the ability to claim the 121 Safe Harbor.

[00:38:31] Speaker 05:
And under Amgen, the failure to file that divisional is

[00:38:37] Speaker 05:
game over with respect to the entitlement to the narrow section 121.

[00:38:42] Speaker 05:
Finally, there's the restriction requirement issue, and the restriction requirement was addressed by the district court in footnote five.

[00:38:50] Speaker 05:
She found that the presence of the 629 application as the CIP demonstrated filed three months before any restriction requirements here, demonstrated there was no entitlement to section 121.

[00:39:05] Speaker 05:
For all of those reasons,

[00:39:07] Speaker 05:
I submit that there are narrow independent bases, all of which are amply supported by the record, requiring no further facts binding by this court or by the court below upon which this court can affirm.

[00:39:20] Speaker 05:
It really is not asking too much of the patentee here to look at their patent, read their patent, see if it needs correction before they go ahead and assert it, especially in this case

[00:39:36] Speaker 05:
where the patent had already been found invalid by this court.

[00:39:40] Speaker 05:
I submitted second verse same as the first.

[00:39:43] Speaker 05:
All of the efforts before the Patent Office did nothing to address the fundamental problems with entitlement to Section 121.

[00:39:50] Speaker 05:
Unless the court has further questions.

[00:39:55] Speaker 08:
Did you find the Intel case?

[00:39:59] Speaker 05:
I believe the citation I have here is 703, F3, 1360.

[00:40:03] Speaker 05:
It's a 2012 Federal Circuit case.

[00:40:07] Speaker 05:
The title is Intel Corporation versus Negotiated Data Solutions.

[00:40:11] Speaker 05:
I apologize, we didn't have this in our papers.

[00:40:13] Speaker 05:
It was raised for the first time on reply.

[00:40:15] Speaker 07:
Yeah, you didn't have it so it's understandable.

[00:40:20] Speaker 07:
Thank you.

[00:40:20] Speaker 07:
Thank you.

[00:40:25] Speaker 03:
Thank you, Your Honors.

[00:40:25] Speaker 03:
I'd like to say just a very brief thing on the question of whether there was a correctable error and then turn to the co-pendency requirement.

[00:40:32] Speaker 03:
On the issue of whether we can correct our honest but mistaken belief about the law, my friends cite two cases and I just want to respond to those cases.

[00:40:40] Speaker 03:
Ms.

[00:40:40] Speaker 03:
Jacobs cited the Whittle Fee case from this court's predecessor and on that case I think all that I would say is that the change in law in that case occurred during the prosecution of the original patent.

[00:40:53] Speaker 03:
And so the change in law occurred before that patent actually issued.

[00:40:58] Speaker 03:
And so we believe that that case is plainly distinguishable.

[00:41:02] Speaker 03:
certainly the appropriate vantage point at which to judge the reasonableness of the error is the point of the prior application, the point at which that application issues.

[00:41:11] Speaker 03:
And I would respectfully submit that for the reasons that we discussed in the earlier colloquy, we don't believe that it is appropriate to set a higher bar and require there to be a change in the law or to have to look at the intervening decision and see how clear the panel thought that the outcome was.

[00:41:29] Speaker 03:
We believe that a reasonableness standard

[00:41:31] Speaker 03:
combined with a requirement that the applicant, in fact, possess the requisite belief is sufficient to preserve the narrowness of the degree to which errors can be corrected for mistakes of law.

[00:41:43] Speaker 03:
I would note, by the way, in response to Mr. Karsten, that the Amgen case was the case that extended the rule of this Court's 2008 decision to continuation applications as well.

[00:41:54] Speaker 03:
It said that continuation applications were not entitled to the safe harbor.

[00:41:58] Speaker 03:
But it said nothing about the question of whether that error could be corrected in reissue.

[00:42:03] Speaker 03:
And for the reasons that I think were well illustrated by Judge Hughes' hypothetical, it seems antithetical to the purpose of the reissue statute to say that even where the sole error was the attachment of the wrong label, the use of the word continuation rather than divisional, that that error would not be correctable.

[00:42:19] Speaker 03:
Let me turn directly to the issue of co-pendants.

[00:42:22] Speaker 03:
And again, as a preliminary matter, we believe that the athletes have offered no reason to deviate from this court's ordinary practice of leaving even truly legal issues for resolution in the first instance by the district court.

[00:42:33] Speaker 03:
But to use Chief Judge Prost's phrase, I by no means want to transmit a lack of confidence in that argument.

[00:42:41] Speaker 03:
Our argument is based on the language of section 252 itself.

[00:42:45] Speaker 03:
And I'm not aware of this in telecase.

[00:42:47] Speaker 03:
We'll, of course, happily take a look at it after the oral argument.

[00:42:50] Speaker 03:
But as I indicated in my earlier argument, our submission on this copenancy issue is quite straightforward, which is to say that in the ordinary instance where, for instance, you have a divisional application that issues, that is filed copenantly and that results in an issued patent and there are some technical defects, say the applicant names the wrong inventors or fails to include a requisite oath or declaration, I don't think anyone believes that in that instance

[00:43:19] Speaker 03:
the applicant would lose the benefit of the earlier filing date by proceeding in reissue.

[00:43:24] Speaker 03:
And I think it would be a quite dramatic change in practice for this Court to say that where you have an error that is indisputably correctable, but where the reference patent issues in the intervening period, you're not entitled to the safe harbor.

[00:43:37] Speaker 03:
And again, the language of Section 252, in our view, could not be clearer.

[00:43:41] Speaker 03:
And I would point this Court as well to the analog in the context of PCT and national stage

[00:43:48] Speaker 03:
a national stage application is treated as if it were filed as of the date of the earlier PCT application.

[00:43:55] Speaker 03:
Of course, that's also an issue in this case.

[00:43:58] Speaker 03:
And that is by virtue of section 363 of the patent code, which is worded in much the same way as section 252, in which this court has construed to permit an applicant to have the benefit of the earlier filing date.

[00:44:11] Speaker 03:
And so too, in the reissue context, we respectfully submit that that is appropriate.

[00:44:15] Speaker 03:
I see that my time has expired.

[00:44:16] Speaker 08:
Thank you.

[00:44:17] Speaker 08:
We thank all counsel and the cases submitted.