[00:00:00] Speaker 01: 1710. [00:00:01] Speaker 01: Mr. Norris, you have 15 minutes. [00:00:05] Speaker 01: Thank you, Your Honor. [00:00:06] Speaker 02: May it please the court. [00:00:07] Speaker 02: I'm here to ask this court to reverse the decision of the board in interference. [00:00:15] Speaker 01: Can you tell us what's going on with the other side, Carnegie Institute of Washington? [00:00:20] Speaker 01: What's the status of their claims? [00:00:24] Speaker 02: Carnegie instituted an appeal in this court following the decision [00:00:30] Speaker 02: in the patent office and withdrew that appeal at their request. [00:00:37] Speaker 01: Okay. [00:00:38] Speaker 01: So what does that mean? [00:00:41] Speaker 01: What is your understanding of the status of all of their patent claims across those three patents? [00:00:48] Speaker 02: At the conclusion of the interference, the board canceled all of the involved claims, all the claims which could have interfered with the claims that [00:01:00] Speaker 02: CSIRO had presented. [00:01:01] Speaker 02: Those claims are now canceled permanently because Carnegie has withdrawn its appeal. [00:01:08] Speaker 02: It has no further basis for those claims to be reinstated. [00:01:13] Speaker 00: Why do you think they're not here today? [00:01:15] Speaker 00: I mean, don't they still have some interest in whether you get a patent or not? [00:01:20] Speaker 02: The parties were able to come to an agreement. [00:01:26] Speaker 02: which was not able to resolve the entire, all the issues in the appeal, but as a result of that agreement, as discussed in the papers that have been filed in this court, the Carnegie has withdrawn its appeal from pending in this court. [00:01:52] Speaker 00: No dispute between the parties. [00:01:54] Speaker 00: Why do we have jurisdiction? [00:01:56] Speaker 00: It just occurs to me. [00:01:58] Speaker 02: The jurisdiction comes from 35 USC 141. [00:02:03] Speaker 02: CSIRO and Bayer Crop Signs are not satisfied with the decision of the Patent Office and under that statute have the right to appeal to ask you to overturn that. [00:02:20] Speaker 01: The decision was to not permit you to trigger an interference, right? [00:02:25] Speaker 02: Now the decision was at the conclusion of the interference to persist in finally refusing claims 52 to 62 and 69 to 106 of CSIRO's application. [00:02:43] Speaker 02: Claims of the CSIRO application were not refused and that was the basis for the interference proceeding to [00:02:54] Speaker 02: a priority phase and priority was determined. [00:02:56] Speaker 02: But after priority phase was determined in the interference, the board persisted in its decision that claims 52 to 62 and 69 to 106 were unpatentable under 135B1. [00:03:09] Speaker 02: That decision was based, we submit, on a misconstruction of the statute. [00:03:19] Speaker 02: And furthermore, as a second reason why it was incorrect, the judgment [00:03:23] Speaker 02: at the conclusion of the interference did not take into account the fact that all the claims of the Carnegie patent, which could have provoked an interference, which could have possibly constituted a bar under Section 135B, were now canceled. [00:03:39] Speaker 02: And being canceled, there, boy, there is no claim of an issued patent to bar CSIRO's claims at this point, and the board simply [00:03:51] Speaker 02: did not take that into consideration in rendering the final judgment and continuing to refuse CSIRO's claims. [00:03:59] Speaker 00: If they were to agree that the board was wrong to impose a requirement of diligent prosecution, would we then remand to the board on the material differences test? [00:04:09] Speaker 00: How would that work out? [00:04:11] Speaker 02: I do not believe a remand would be necessary because priority has been determined in this case. [00:04:17] Speaker 02: So there are no claims [00:04:20] Speaker 02: in the Carnegie patents that could present a bar under 135B. [00:04:26] Speaker 02: With no claims to present a bar under 135B, there's no longer any need to look into the questions that follow from that condition. [00:04:42] Speaker 00: But wouldn't they have to look at whether there are material differences between the claim [00:04:47] Speaker 00: Well, you don't even think they need to look at material differences at all between the original claim that was copied and the later claims, because that's the traditional test. [00:04:55] Speaker 02: Yes, you're right. [00:04:57] Speaker 02: Your Honor, that is the traditional test. [00:04:59] Speaker 02: But to need to consider that test, you would first need some claim of an issued patent, which would bar CSIRO's claims if the material difference test was not met. [00:05:15] Speaker 02: But there are no claims of an issued patent to invoke section 135B at this point. [00:05:22] Speaker 00: So to make that argument, you're really relying on your cancellation argument, that they shouldn't have canceled. [00:05:27] Speaker 00: Since Carnegie had no claims at the end of the proceeding, you should have been entitled to your claims. [00:05:33] Speaker 02: Yes. [00:05:34] Speaker 02: As this court, I think the analogy to the Fresenius case, which this court decided, is very apt. [00:05:43] Speaker 02: In that case, [00:05:44] Speaker 02: The Patent Office had canceled claims in a re-examination proceeding, and it was during the course of a very long litigation, and the appeal in that litigation was in front of this court, and the court held the general principle that a final judgment has to be rendered on the facts, the law, as it exists at the time of the final judgment. [00:06:11] Speaker 02: Well, at the time of the final judgment for [00:06:15] Speaker 02: this interference, the board had determined priority. [00:06:20] Speaker 02: All of the claims which could have provoked a bar under 135B were canceled. [00:06:27] Speaker 02: In Fresenius, this court held that canceled claims canceled by the patent office are void ab initio, as if they never existed. [00:06:36] Speaker 02: They cannot support damages under section 281, so there's no particular reason why they should be able to support [00:06:44] Speaker 02: a bar under section 135 of the same statute. [00:06:49] Speaker 02: So at the time of judgment, the board should have said to itself, these claims, which at one time could have provoked a bar under 135B, and we would have had to undertake the materials difference test, no longer exist. [00:07:04] Speaker 02: They are as if they never existed. [00:07:06] Speaker 02: There's no reason to refuse the claims from the CSIRO application. [00:07:11] Speaker 02: That is the second [00:07:13] Speaker 02: basis we present in our brief to you in this case. [00:07:18] Speaker 02: The first basis is that the board's decision in the first instance is simply wrong. [00:07:25] Speaker 02: It contravenes 67 years of this court's precedence, going all the way back to 1946. [00:07:32] Speaker 02: In 1946 and in 1947, the Thompson v. Hamilton and the Crensby-Masher case interpreted Section 135B. [00:07:40] Speaker 02: Well, at that time, it was [00:07:43] Speaker 02: rule 94 of the Patent Office, which was identical to RS 4903, which is now codified essentially identically as section 135B1 applicable to this case. [00:08:00] Speaker 02: And in Krims v. Musher, the board put forward a theory essentially the same as the theory they put forward in their first decision [00:08:11] Speaker 02: to refuse CSIRO's case, that there is some equitable component of prosecution that requires an applicant to copy the claims within a fixed period. [00:08:27] Speaker 02: And the CCPA said no. [00:08:30] Speaker 02: All those equitable doctrines which went before the enactment of the statute are not authority. [00:08:38] Speaker 02: This was elaborated again [00:08:40] Speaker 02: by the CCPA in the Corbett case where they went through a detailed analysis of the legislative history of Section 135B and determined that the amendment of RS-4903 and successful enactments converted what had been an equitable blood doctrine applicable at the court's discretion into a statutory requirement like the statutory time bar of 102B, the application of which is mandatory. [00:09:11] Speaker 02: the explicit language of Section 135B controls. [00:09:16] Speaker 02: The CCPA concluded that the quality of the patentee's conduct here is of no moment in determining the applicability of the 135B bar, and therefore we need not consider the matter further. [00:09:31] Speaker 02: And that is what the board should have done in its first decision, and instead the board put forward a theory which had been tried and rejected all the way back in 1940. [00:09:41] Speaker 01: Just curious, why is it that you canceled the claim after you introduced the claim within the one-year window? [00:09:49] Speaker 01: There was a written description rejection against it, right? [00:09:53] Speaker 02: There was a written description rejection. [00:09:54] Speaker 02: So in the prosecution of CSIRO's application, there were original claims, 14 to 20, which were directed to substantially the same subject matter. [00:10:06] Speaker 02: Those claims were [00:10:09] Speaker 02: not elected in response to a restriction requirement. [00:10:14] Speaker 02: Then the Carnegie patent issued and within one year of the Carnegie patent, CSIRO copied the claims of the Carnegie patent. [00:10:22] Speaker 02: Those claims were rejected under a written description requirement. [00:10:26] Speaker 02: The patent office could have declared an interference right then based on those claims. [00:10:31] Speaker 01: I'm asking why did you [00:10:34] Speaker 01: cancel the claim in the face of a written description rejection? [00:10:37] Speaker 02: The claims were presented a second time and rejected a second time and at that point it was past the one-year period when you could introduce claims to substantiate the same subject matter and so a decision was taken to attempt to get a patent on claims which would not be barred under 135B. [00:10:59] Speaker 02: Those claims in turn were rejected at which point it was decided to [00:11:04] Speaker 02: um, make an attempt to get everything in front of the board. [00:11:08] Speaker 01: You're saying you canceled the claims the first go round based on what you now believe to have been a misunderstanding of the state of the law? [00:11:16] Speaker 01: No, we, we relied at the time on- I mean, if you think you can get them now, you should have been able to get them back then, right? [00:11:26] Speaker 01: It did trigger an interference. [00:11:27] Speaker 02: Yes. [00:11:29] Speaker 02: Yes. [00:11:34] Speaker 02: In the first instance, I do not believe that that history actually matters. [00:11:41] Speaker 02: I'm just curious. [00:11:43] Speaker 02: Well, having been faced with the rejection twice, the decision was taken to attempt to get a patent passed the examiner, to convince the examiner of patentable subject matter before undertaking the substantial time and expense of an interference proceeding. [00:12:02] Speaker 02: The case has been going on for five years. [00:12:07] Speaker 02: That attempt was made and when it became clear that the only way to get out of the patent office it appeared was to go through the interference proceeding, the claims were reintroduced and at that point the examiner allowed them to be [00:12:31] Speaker 02: sent up to the board for consideration of interference. [00:12:36] Speaker 02: These are almost exactly the pattern of facts in the Krenz versus Muesher case. [00:12:42] Speaker 02: Krenz introduced claims, introduced more claims, canceled those claims, introduced claims that were not relevant to the count, and then came back and introduced claims that corresponded to the count and provoked the interference. [00:13:00] Speaker 02: And in that case, as in here, this court should interpret Section 135B as it did there, allowing the applicant to do that, because there is only one condition required in Section 135B, and that is that the applicant have filed such a claim before one year after the issuance of the patent. [00:13:29] Speaker 00: I hope we don't agree with your cancellation argument. [00:13:31] Speaker 00: Do we need to remand so that the board can consider the material differences test or not? [00:13:36] Speaker 02: No, I do not believe so. [00:13:41] Speaker 02: Because I think I understand you. [00:13:46] Speaker 02: You're saying that if the cancellation argument is not correct, would the board? [00:13:50] Speaker 02: Perhaps. [00:13:52] Speaker 02: Perhaps in that case, it would be. [00:13:55] Speaker 02: But I don't believe the board [00:13:58] Speaker 02: I don't believe that's necessary either because if you review the Carnegie motion in this case and under the Patent Office's procedural rules, Carnegie in its motion had the burden to show that it was entitled to relief under Section 135B. [00:14:20] Speaker 02: It didn't even compare CSIRO's pending claims to CSIRO's. [00:14:27] Speaker 02: passing claims except in the instance of claims 52 to 61 to admit that they corresponded to the claims which CSIRO had copied timely within the one year period. [00:14:40] Speaker 02: For all the other claims, they did not compare CSIRO's claims to the prior claims. [00:14:44] Speaker 02: So there's no allegation by Carnegie that there are material differences between CSIRO's pending claims. [00:14:54] Speaker 02: So I'm not sure how the board could [00:14:58] Speaker 02: find any. [00:14:59] Speaker 02: And in its decision, the board did not find any with respect to the claims that had been, that have been now refused. [00:15:14] Speaker 01: Okay. [00:15:14] Speaker 01: Thank you. [00:15:15] Speaker 01: The case is submitted.