[00:00:00] Speaker 01:
for argument this morning is 151574, Immersion Corporation versus HDC Corporation.

[00:00:07] Speaker 01:
My understanding is, Mr. Palmore, you're taking eight minutes, your Council of Government is taking ten, and you'll do rebuttal.

[00:00:14] Speaker 01:
Is that right?

[00:00:15] Speaker 01:
Okay.

[00:00:15] Speaker 01:
Please proceed.

[00:00:17] Speaker 06:
Thank you.

[00:00:18] Speaker 06:
I'm Joseph Palmore here on behalf of Immersion Corporation.

[00:00:21] Speaker 06:
The PTO's rule permitting same-day filings of continuation applications is a reasonable exercise of administrative discretion to sequence two purely administrative occurrences.

[00:00:31] Speaker 06:
And it is supported by a century and a half of history, by profound reliance interests, and by multiple deference doctrines.

[00:00:38] Speaker 01:
I don't disagree with that.

[00:00:40] Speaker 01:
But when you say sequencing, the word that we're dealing with is before.

[00:00:44] Speaker 01:
So it's not random sequence.

[00:00:46] Speaker 01:
It's that one thing happens.

[00:00:47] Speaker 01:
I don't want to use the term before determining it, but I don't know the word.

[00:00:50] Speaker 01:
One thing happens first and something else happens after that, right?

[00:00:54] Speaker 06:
That's correct, Chief Judge Prost.

[00:00:56] Speaker 06:
And the key is the one thing and the other thing.

[00:00:59] Speaker 06:
So the case is not just about before in isolation.

[00:01:03] Speaker 06:
It's about a filing coming before the patenting.

[00:01:07] Speaker 06:
So it requires a determination of which of those two administrative occurrences comes first.

[00:01:13] Speaker 06:
And when the two happen on the same day, the statute is silent.

[00:01:17] Speaker 06:
as to how to sequence them and how to understand which comes first.

[00:01:20] Speaker 01:
Why is it silent?

[00:01:22] Speaker 01:
If something has to happen before something else happens, then whether it's within a 24-hour period or within a one-year period, it still doesn't change the fact that something happens before something else, right?

[00:01:35] Speaker 06:
Well, this is the district court's holding, if this is what you're referring to, the district court applied kind of a stopwatch approach to this question and said,

[00:01:42] Speaker 06:
We need a time of comparison.

[00:01:44] Speaker 06:
When exactly in the real world did the filing happen?

[00:01:47] Speaker 01:
Why is that wrong, given the clear language?

[00:01:49] Speaker 06:
Because there's no means of determining those two times.

[00:01:53] Speaker 06:
And I would point out that HTC does not defend the district court's rationale.

[00:01:58] Speaker 03:
I guess one way of understanding your point about there is no way of determining would be there could be something to determine, but they're not set up to determine it.

[00:02:12] Speaker 03:
I took it that your point was maybe more fundamental, that this thing called filing and this thing called patenting are not objectively identifiable physical acts.

[00:02:25] Speaker 03:
They are legal constructs that somebody has to define.

[00:02:30] Speaker 03:
So it's not just they can't find it because they haven't developed the microscope or the clock to do it.

[00:02:37] Speaker 03:
It's that these are not things that exist apart from their deeming and definitional activities.

[00:02:45] Speaker 06:
That's exactly right, Judge Toronto.

[00:02:46] Speaker 06:
That is our position.

[00:02:48] Speaker 06:
There is no way in the real world you can sit with a stopwatch and observe, as an empirical matter, when these things happen.

[00:02:54] Speaker 01:
OK.

[00:02:54] Speaker 01:
If that's the case, however, given that the language still compels one thing happening before another,

[00:03:00] Speaker 01:
then why isn't the necessary outcome for the patent office to then say, OK, if we are unable, for whatever reason, to determine the exact time, then we'll have to say you file it on the day before, even though that sequencing is not necessarily compelled by the statute.

[00:03:17] Speaker 01:
But if it can't work out in one day, why isn't the necessary fallback to say, OK, it requires before, so we'll pick the day before and not allow the same day because we can't calculate what happens within that one day period?

[00:03:30] Speaker 06:
Because that's not the way Congress wrote the statute.

[00:03:33] Speaker 06:
The way that HTC argues the case is as if Section 120 said the filing had to happen on the date before the patenting.

[00:03:42] Speaker 06:
And in fact, we have a long string side in our reply brief of provisions of the Patent Act which are replete with this date of formulation that define timing requirements vis-a-vis a date.

[00:03:53] Speaker 06:
In section 120, Congress did not use that formulation.

[00:03:57] Speaker 06:
It required a comparison between two, as Judge Toronto said, purely administrative events, a filing and a patenting, which is a term not used anywhere else in the statute.

[00:04:08] Speaker 06:
And it was silent on how to sequence them when they occur on the same day.

[00:04:14] Speaker 06:
And what HTC is suggesting is that the Congress in section 120, sub silencio, overturned a century

[00:04:22] Speaker 06:
of settled patent act practice without any comment or without anyone noticing.

[00:04:27] Speaker 01:
If you step back and say, OK, well, what is the purpose of the statute?

[00:04:32] Speaker 01:
To me, the language is clear.

[00:04:33] Speaker 01:
It says before.

[00:04:34] Speaker 01:
There might be other reasons to dislodge that.

[00:04:38] Speaker 01:
But isn't it clear that Congress thought that if you've got a prior application and you want to file a continuation and use that priority date, it makes perfect sense that that still has to be pending when the continuation is filed, right?

[00:04:53] Speaker 01:
Is there any dispute about that, that this reading it the way Judge Andrews read it, at least, makes absolute sense and is consistent with what clearly this whole provision is about?

[00:05:02] Speaker 06:
Well, I would respectfully disagree because I think given the history, Judge Andrews' position and HTC's position is unsupported because all Patent Act, all continuing application practice, both before the 52 Act and after the 52 Act, sprang from the Supreme Court's decision in Godfrey versus Ames.

[00:05:21] Speaker 06:
And in Godfrey,

[00:05:23] Speaker 06:
the withdrawal and the patent issuance happened on the same day.

[00:05:29] Speaker 01:
Yeah, but withdrawal was a lot different.

[00:05:30] Speaker 01:
It's a lot more complex, right?

[00:05:32] Speaker 01:
Because you file a motion to withdraw, and that was what we were talking about in Godfrey, but nothing happens when you file a motion.

[00:05:39] Speaker 01:
The patent office has to grant the motion, right?

[00:05:42] Speaker 01:
So that's a little bit different

[00:05:44] Speaker 01:
than when we're talking about what we understand to be patenting here, which is the Patent Office issues the patent.

[00:05:50] Speaker 06:
Well, Chief Judge Prost, I respectfully disagree with that reading of Godfrey.

[00:05:52] Speaker 06:
That's what HTC says was going on in Godfrey.

[00:05:55] Speaker 06:
But if you read the opinion, there is no mention there of a motion to withdraw that was acted on at some later time.

[00:06:02] Speaker 06:
It was withdrawn, and that is how the court...

[00:06:05] Speaker 06:
By the applicant.

[00:06:06] Speaker 01:
By the applicant.

[00:06:07] Speaker 01:
Yes.

[00:06:07] Speaker 01:
Is that, as you understand, practiced before the Patent Office?

[00:06:10] Speaker 01:
Does that have any final legal consequence when you move to withdraw?

[00:06:15] Speaker 01:
Doesn't withdrawal really come?

[00:06:17] Speaker 01:
Doesn't the final act require the board to act and approve that motion or whatever it is?

[00:06:22] Speaker 01:
Well, that may be the case.

[00:06:23] Speaker 01:
I don't know for sure.

[00:06:23] Speaker 06:
I think that is the case now.

[00:06:25] Speaker 06:
But when you file a petition to withdraw or a petition to abandon, you can actually request that it be deemed to have occurred on the date of the filing of a continuation application.

[00:06:35] Speaker 06:
again consistent with his long-settled practice, springing from Godfrey, that is undisturbed for nearly a century before Congress adopts the 52 Act.

[00:06:46] Speaker 06:
Then in Section 120, Congress

[00:06:49] Speaker 06:
codified, in the words of this court in Transco, intended to codify pre-existing continuation application practice unless it specifically made a change and called it out, which it did in one respect.

[00:07:00] Speaker 06:
It required that a continuation application refer to the prior application in order to be valid.

[00:07:06] Speaker 00:
While the term before in this statute is pretty clear, unambiguous, I am having some trouble with what is meant by the terms patenting and filing.

[00:07:19] Speaker 00:
I think there is some ambiguity here.

[00:07:23] Speaker 00:
You refer to those terms and the Patent Office's decision on those terms as one of being just administrative.

[00:07:32] Speaker 00:
But how those terms are defined and how the Patent Office reacts to those terms has an actual effect potentially on priority.

[00:07:44] Speaker 00:
So it's not really simply an administrative determination.

[00:07:48] Speaker 00:
It's a determination that can have some effect on, on party's rights.

[00:07:55] Speaker 06:
Absolutely.

[00:07:56] Speaker 06:
Judge Lynn, just like any kind of deadline can have effects on party's rights, but that doesn't mean it's not procedural.

[00:08:01] Speaker 06:
And here the PTO has implemented a mailbox rule, which Congress authorized it to do and to deem a filing to have occurred on the date that something was dropped in an express mailbox.

[00:08:13] Speaker 06:
So this is all about deeming, this is all about, to a certain extent, a fiction of things that we are not observing in the real world with a stopwatch, but we are deeming to have occurred at a certain time on a certain day.

[00:08:26] Speaker 06:
And I think the government citation to federal rule of appellate procedure 4A2 is quite apt.

[00:08:32] Speaker 06:
That rule provides that if a notice of appeal is filed after a judgment is announced, but before it is entered,

[00:08:39] Speaker 06:
it is deemed to have been filed on the date of entry and after entry.

[00:08:45] Speaker 06:
And that is exactly parallel to what the patent office has done here, consistent with 150 years of practice, which is that when the two events happen on the same day, it deems one to have occurred after the other or the filing to have occurred before the patenting.

[00:09:01] Speaker 03:
Do you have an argument?

[00:09:02] Speaker 03:
I don't remember you're making one that if the

[00:09:06] Speaker 03:
PTO had resolved the issue differently that would be impermissible under the statute.

[00:09:14] Speaker 06:
We haven't expressly made that argument.

[00:09:16] Speaker 06:
I think they would have a problem potentially under cases like Transco and this court's predecessor issued the decision of Enrae Henriksen in which the court has found that when the PTO seeks to implement section 120 by departing from settled historical practice,

[00:09:34] Speaker 06:
this court in Henry Henriksen found that that was prohibited, again, because Congress on the finding that Congress intended to adopt and codify pre-1952 continuation application practice in Section 120 and that the PTO can't depart from it.

[00:09:50] Speaker 06:
And at the same day, filings were consistently permitted.

[00:09:54] Speaker 06:
But of course, I don't have to convince you of that.

[00:09:55] Speaker 06:
All I have to convince you of is that

[00:09:57] Speaker 06:
the PTO's choice to adopt and continue long-standing practices reasonable.

[00:10:02] Speaker 03:
Explain to me, there wasn't an issue in Godfrey about some sort of beforeness, temporal priority.

[00:10:12] Speaker 03:
It was just Godfrey.

[00:10:14] Speaker 03:
It was just language about it would treat it as the same application.

[00:10:19] Speaker 06:
That it happened on the same day that there was no break.

[00:10:23] Speaker 03:
Remind me, what was the legal consequence of whether or not there was a break?

[00:10:27] Speaker 03:
in Godfrey?

[00:10:28] Speaker 06:
Well, the consequence of whether or not it was a valid continuation was what was at issue in Godfrey.

[00:10:33] Speaker 03:
For purposes of an effective date?

[00:10:35] Speaker 06:
For purposes of the on-sale bar, the patent applicant needed the benefit of the earlier filing.

[00:10:40] Speaker 03:
So it was a timing question?

[00:10:41] Speaker 06:
It was a timing question with respect to whether the second application was a continuation of the first and could have the benefit of the first filing date.

[00:10:52] Speaker 01:
You've exhausted your rebuttal.

[00:10:53] Speaker 01:
We'll restore the two minutes of rebuttal.

[00:10:55] Speaker 06:
Thank you, Judge Christ.

[00:11:05] Speaker 05:
May it please the court, Benjamin Schultz on behalf of the United States.

[00:11:10] Speaker 05:
The Patent Office for over 50 years has reasonably understood Section 120 as meaning that when a continuing application is filed on the same day that its parent issues as a patent, the continuing application is understood as having been filed before the patent date.

[00:11:25] Speaker 01:
Can I ask you a process question just about how this all works, which is that in this case, as I understand it, the Patent Office

[00:11:34] Speaker 01:
issued some notice of allowance that had a projected date on which the original patent application would issue.

[00:11:41] Speaker 01:
I'm just wondering how an applicant knows, whether it's the day before, the same day, whatever, how a patentee can really know what date he's working with in terms of when the original is going to issue, right?

[00:11:53] Speaker 05:
Sure.

[00:11:54] Speaker 05:
So what happens is after the notice of allowance is issued, then the applicant has to pay the fee.

[00:11:58] Speaker 05:
And then after the fee is paid,

[00:12:00] Speaker 05:
Then typically what happens, and it's roughly two weeks before the expected issuance, the patent office sends someone a notice saying, basically, we think this is the date that your patent is going to issue.

[00:12:10] Speaker 05:
Occasionally, it turns out that for one reason or another, that date isn't kept.

[00:12:14] Speaker 01:
But applicants generally... What happens in a circumstance if that date comes earlier?

[00:12:18] Speaker 01:
If they actually act earlier so that a party is precluded from filing the continuation because they thought the patent was going to... You say the expected date is April 1st, and it turns out

[00:12:30] Speaker 01:
Does it happen?

[00:12:31] Speaker 01:
I mean, it's conceivable, right, that the Patent Office would issue it before rather than after?

[00:12:36] Speaker 05:
I don't know that the rules preclude the Patent Office from doing that.

[00:12:39] Speaker 05:
I'm also not aware that that has ever happened.

[00:12:40] Speaker 05:
What I am aware of happening is sometimes for one reason or another at the last minute some error is found and then issuance is delayed.

[00:12:49] Speaker 05:
Which case we would presumably be avoiding most of this stuff.

[00:12:52] Speaker 05:
That's right.

[00:12:52] Speaker 05:
Although my understanding is typically when PTO issues that notice of issuance, it's extremely likely

[00:12:58] Speaker 05:
that the issuance date that PTO predicts is, in fact, the date that is... And that was this case.

[00:13:03] Speaker 05:
And my understanding is that was this case, and that's... How are we going to take you on this one?

[00:13:09] Speaker 05:
No, no, no.

[00:13:09] Speaker 05:
No worries.

[00:13:10] Speaker 05:
But actually, I think, Your Honor, that whole sequencing shows exactly why it's so important in interpreting this statute and in understanding whether or not PTO gets deference here to recognize that there are patent applicants who are relying on PTO's interpretation, which is a long-standing interpretation in which we contend.

[00:13:28] Speaker 05:
is entitled to deference.

[00:13:29] Speaker 01:
Yeah, but what effect does that have, exclusively the reliance?

[00:13:36] Speaker 01:
I mean, they're entitled to deference maybe for a whole slew of reasons, but how does reliance really play a key role if we can establish that there's some number, Mr. Bagatell might disagree, we're not talking about 30,000, but we're talking about some number of people who read the MPE's EP is clear, and they read it and they relied on it.

[00:13:56] Speaker 01:
What happens

[00:13:57] Speaker 01:
if Judge Andrew's ruling is sustained?

[00:14:00] Speaker 05:
Well, so I think several different things happen.

[00:14:03] Speaker 05:
First of all, the Supreme Court's opinion in Zenith Radio is an opinion that explains that in interpreting what a statute means, a court should take account of the fact that individuals have relied on a longstanding interpretation.

[00:14:14] Speaker 05:
Furthermore, we think that if the court were to reach Skidmore deference, and although we contend that Chevron deference is applicable here, but if the court gets to Skidmore deference, one of the factors that we think would influence Skidmore deference as well

[00:14:26] Speaker 05:
is the fact that a number of individuals have relied on this.

[00:14:29] Speaker 05:
And we also cite the Ninth Circuit's opinion in the Alaska stock photography, which is that when lots of individuals are relying on an agency's long-standing construction, it's important for courts to account for that.

[00:14:40] Speaker 05:
So whether you want to do it as a matter of deference or whether you want to do it as a matter of interpreting the statute in the first place,

[00:14:46] Speaker 05:
Either way, we think it has a role to play in this case.

[00:14:49] Speaker 03:
Can you remind me what your chain of reasoning is from the language of the statute to some squishiness that the agency can resolve?

[00:15:00] Speaker 05:
Absolutely.

[00:15:01] Speaker 03:
So the relevant phrase... You understand the technical terms.

[00:15:04] Speaker 05:
Yes.

[00:15:04] Speaker 05:
So the relevant phrase here is filed before the patenting.

[00:15:08] Speaker 05:
And so the key questions here are when is the continuing application filed and when is the patenting.

[00:15:14] Speaker 05:
And as far as the agency is concerned,

[00:15:16] Speaker 05:
when those who happen in the same day, the filing is an ambiguous concept, and the patenting is an ambiguous concept.

[00:15:22] Speaker 05:
And PTO has reasonably understood that in those circumstances, when you file a continuing application on the same day as patent issuance, then, in fact, the filing happens before the patenting.

[00:15:33] Speaker 05:
And I think that the example that we cite in our brief that is, in my mind, a very good example of this, is that the federal rules of appellate procedure do something similar, which is also what Mr. Palmore mentioned, namely that even though you might think in a very physical sense

[00:15:46] Speaker 05:
a notice of appeal filed after a judgment is announced but before it's actually entered.

[00:15:51] Speaker 05:
Even though in a physical sense you might think that that notice of appeal is filed before the district court enters judgment, the federal rules of appellate procedure nonetheless say that in terms of a legal matter, we treat them as having been filed on the same date and after the district court enters judgment.

[00:16:07] Speaker 05:
And we think what the PTO has done here is something similar.

[00:16:10] Speaker 05:
It said that filing is inherently

[00:16:12] Speaker 05:
a concept that is about, what does it mean when you file something?

[00:16:16] Speaker 03:
But I suppose one might read the existence of a deeming provision as indicating that in the absence of such a deeming provision, reality, not fiction, governs.

[00:16:30] Speaker 05:
Well, I think in the absence of a deeming provision, you go with what other rules say.

[00:16:34] Speaker 05:
And other rules say, generally speaking, a document is filed with the court when it's received by the court.

[00:16:39] Speaker 05:
But even then, there are exceptions.

[00:16:41] Speaker 05:
And so again, just to go back to the Federal Rules of Appellate Procedure, for example, the rule that applies to most filings is that when the court receives the document, the document is filed.

[00:16:51] Speaker 05:
But certain kinds of documents, like briefs and appendices, are understood as filed when they're deposited with certain kinds of mailing services.

[00:16:57] Speaker 05:
And so the idea is that even the concept of a filing, even if you try and understand it as a physical thing, that still begs the question of what physical thing?

[00:17:06] Speaker 01:
So if there were no common law backdrop and the Patent Office had just gotten the statute and they said, we can't cast aside the word before, so we're going to issue either a regulation or explain in the MPEP that because we can't determine same-day stuff because our record keeping isn't that clear, we're going to say that you have to file the continuation the day before.

[00:17:29] Speaker 01:
Do you think that would be entitled to deference and we should affirm that kind of thing?

[00:17:33] Speaker 05:
Well, I think if PTO were to adopt that rule, then

[00:17:36] Speaker 05:
then we think that PTO would be entitled to deference.

[00:17:38] Speaker 05:
It would be a harder case for us because of the history.

[00:17:41] Speaker 01:
And whether or not... But my hypothetical didn't include the history.

[00:17:44] Speaker 05:
Sure, but I think it might be a harder case for us for various reasons, and it wouldn't be the long-standing interpretation of the agency.

[00:17:52] Speaker 05:
But regardless, here we do have that history.

[00:17:55] Speaker 01:
Here we do... But what is the end of your answer to the question?

[00:17:58] Speaker 01:
But you think it would be being accorded deference, and that rule should be appellated?

[00:18:03] Speaker 05:
Well, we think that

[00:18:05] Speaker 05:
The Patent Act in Section 2 says that PTO has the authority to issue procedural rules governing the conduct of proceedings in the office.

[00:18:13] Speaker 05:
And we think that sequencing, when filing happens relative to the patenting, is something procedural.

[00:18:20] Speaker 05:
And so whenever PTO exercised that authority, PTO would be a court of deference.

[00:18:25] Speaker 05:
Now, whether or not a court would conclude that even with that deference, the statute was violated, I suppose, is another issue.

[00:18:30] Speaker 05:
But it certainly would be a procedural rule, and it'd certainly be something

[00:18:33] Speaker 05:
that PTO's views would be a court of deference.

[00:18:36] Speaker 03:
Can I ask you about the patenting side?

[00:18:38] Speaker 03:
We're obviously comparing two things, patenting and filing.

[00:18:41] Speaker 03:
On the patenting side, am I right in thinking that if, say for infringement purposes, somebody sold

[00:18:51] Speaker 03:
a million units within the coverage of a product on a day at, you know, 1202 AM of the day that the patent, that the patenting occurred, that that would all be infringing.

[00:19:05] Speaker 05:
Well, you know, that's something that, that is something that HTC assumes in its brief.

[00:19:10] Speaker 05:
I want to be clear that this court has never actually endorsed that understanding that the patent is enforced the entire day.

[00:19:15] Speaker 05:
But even assuming that HTC is correct in that assumption,

[00:19:19] Speaker 05:
I don't think PTO's rule is inconsistent with that, because even if you think, for example, that one is able to sue for infringement at 1201 AM, then first of all, that could be because just as a matter of remedial damages, you just deem the damages to be the entire day, whether or not issuance happened at that exact moment.

[00:19:36] Speaker 05:
Or even, if you thought that issuance happened at 1201 AM, PTO's rule still says, just as a sequencing matter, that that could be fine, and we're deeming the filing to have occurred one moment before then.

[00:19:47] Speaker 05:
And so I don't think anything about PTO's interpretation would require this court in any way to undermine that assumed principle that you could sue for damages for the entire day.

[00:19:57] Speaker 00:
Could you just clarify for me briefly what is meant by patenting?

[00:20:03] Speaker 00:
And the trouble I'm having is that, to me, it's not a discrete event of any sort.

[00:20:08] Speaker 00:
Filing, I can understand.

[00:20:10] Speaker 05:
I think that's exactly right.

[00:20:11] Speaker 05:
And we raise in our brief that there's some ambiguities at the moment

[00:20:14] Speaker 05:
that it is signed and sealed?

[00:20:16] Speaker 05:
Is it the moment that it leaves the physical premises of PTO's offices?

[00:20:21] Speaker 05:
Is it when it's deposited with the Postal Service?

[00:20:23] Speaker 00:
I know the Patent Office will issue an issue notification with the date and the Patent Office will send the certificate that has the ribbon and seal of the Patent Office.

[00:20:35] Speaker 00:
When is that certificate mailed?

[00:20:37] Speaker 00:
On the date of issue?

[00:20:39] Speaker 00:
Or is it mailed the day before so that the patentee receives it on the date of issue?

[00:20:44] Speaker 05:
My understanding is that it is not mailed until the date of issuance.

[00:20:49] Speaker 05:
It may even be in some circumstances, if there are delays, it might even be after the issuance date.

[00:20:54] Speaker 05:
I can check on that.

[00:20:55] Speaker 05:
I'm not entirely certain.

[00:20:57] Speaker 05:
But it's certainly not mailed and signed and sealed before the issuance date.

[00:21:01] Speaker 01:
But the effective date of the patent

[00:21:03] Speaker 01:
issued is that time, right?

[00:21:06] Speaker 05:
My understanding is the issuance date is, typically the date that it is signed and sealed is the date that has, that is listed as the issuance date.

[00:21:17] Speaker 05:
I suppose there may be unusual circumstances where for one reason or another there's some problem with that, but my understanding is that's typically what happens.

[00:21:26] Speaker 01:
We are out of time, so thank you.

[00:21:28] Speaker 01:
Let's hear from the other side.

[00:21:30] Speaker 01:
As I said, we're starting to rebuttal time.

[00:21:32] Speaker 01:
Thank you.

[00:21:41] Speaker 04:
One thing we haven't talked about this morning is United States versus Locke, which tells us that before a statutory deadline means before it and not on or before it.

[00:21:53] Speaker 04:
Unfortunately, the MPEP has construed before the patenting

[00:21:56] Speaker 04:
to mean on the same date.

[00:21:58] Speaker 03:
But that doesn't, I guess for me at least one reason that that doesn't seem to need to get to the resolution of the issue is that it doesn't address the, what is the term I used before, squishiness of the words that come after before, patenting, filing, actually both the words that comes before and after.

[00:22:20] Speaker 03:
And it's there that I guess I'd like you to talk about why there isn't enough room for

[00:22:27] Speaker 03:
judgment on the part of the PTO to define something that is not self-defining.

[00:22:33] Speaker 04:
I agree, because in our view, both the patenting and the filing are judged with day-level granularity, and in that case, B4 becomes easy.

[00:22:41] Speaker 04:
You do an apples to apples comparison.

[00:22:44] Speaker 04:
So if I can convince you that

[00:22:46] Speaker 04:
the patent is issued on a day and that the filing occurs on a day, then before needs to be measured by day.

[00:22:51] Speaker 04:
But I need to convince you that both the patenting and the filing occur on the day level rather than by the hour of the moment.

[00:22:58] Speaker 04:
And I think the answer to that is in the statute.

[00:23:02] Speaker 04:
Let's take the filing.

[00:23:03] Speaker 04:
The statute itself refers to a filing date.

[00:23:08] Speaker 04:
Section 120 refers to a filing date.

[00:23:10] Speaker 04:
We have a particular statute that authorizes

[00:23:13] Speaker 04:
the PTO to accept filings and deem them as filed on the date of deposit with the United States Postal Service.

[00:23:19] Speaker 04:
It's always referred to as a date, never by an hour or a minute or a moment.

[00:23:26] Speaker 00:
But Section 120 refers to activities, patenting and filing, not a date.

[00:23:34] Speaker 04:
Actually, Section 120 itself does refer to a filing date.

[00:23:39] Speaker 04:
In fact,

[00:23:41] Speaker 04:
it shall have the same effect as to such invention as though filed on the date of the prior application."

[00:23:45] Speaker 04:
So that's the application date.

[00:23:48] Speaker 04:
It doesn't say that in the latter part of the sentence, but as I'll try to explain, patenting, abandonment... That's exactly right.

[00:23:56] Speaker 04:
I'm sorry.

[00:23:56] Speaker 04:
That's exactly right.

[00:23:57] Speaker 00:
The latter part of the sentence doesn't

[00:23:59] Speaker 04:
Right.

[00:23:59] Speaker 04:
And the point is, though, that patenting, abandonment, and termination of proceedings are all determined by date.

[00:24:05] Speaker 04:
That's the way the PTO has always done it, and that's the way the statute refers to it.

[00:24:08] Speaker 04:
So again, if you take a look at section 21, which is the statute that authorizes the regulation that the PTO has issued to say we will deem a patenting to, excuse me, the application to have occurred on the date it is deposited with the United States Postal Service, it's date.

[00:24:28] Speaker 04:
And the same thing is true in section 111, which is the default.

[00:24:31] Speaker 04:
It would be the date received by the PTO.

[00:24:33] Speaker 04:
It's always done by date.

[00:24:34] Speaker 04:
As to patenting, this is a binary issue here.

[00:24:38] Speaker 04:
We have an application, and then it turns into a patent.

[00:24:40] Speaker 04:
There's no time when you're both an application and a patent.

[00:24:43] Speaker 04:
Patenting has to refer to issuance.

[00:24:46] Speaker 04:
It's when it's no longer just an application, and it's become a patent.

[00:24:49] Speaker 04:
Section 154 tells you what that is.

[00:24:53] Speaker 04:
That's a date.

[00:24:54] Speaker 04:
There's a term of the patent.

[00:24:55] Speaker 04:
It runs from the date of issuance.

[00:24:58] Speaker 04:
for twenty years, as adjusted by whole days under section 154B as necessary.

[00:25:03] Speaker 04:
But it's always determined by date.

[00:25:05] Speaker 04:
Courts have always looked at dates, the patents are done by dates, the PTO has never looked at it in anything other than whole dates.

[00:25:12] Speaker 04:
It's simply not done by the hour, the minute, or the moment.

[00:25:15] Speaker 03:
To the extent you're relying on practice, courts, PTO, etc., using, I guess, period, or comma,

[00:25:27] Speaker 03:
It seems to me there is a, and I don't think you dispute, an extremely long-standing and quite consistent practice with respect to this particular issue of temporal beforeness on filing and patenting.

[00:25:45] Speaker 03:
Why can't both of them survive largely because of the traditions?

[00:25:54] Speaker 04:
because the tradition didn't have anything to do with before the patenting.

[00:25:57] Speaker 04:
Godfrey versus Eames deals with the scenario when you're replacing your original application

[00:26:02] Speaker 04:
with a new continuation application.

[00:26:04] Speaker 04:
You send them all into the PTA.

[00:26:05] Speaker 03:
But the tradition, at least since 1961, did have to do with that, right?

[00:26:10] Speaker 03:
Isn't the relevant language of 120 exist since 1961?

[00:26:14] Speaker 04:
Yes, it came in in 1952.

[00:26:16] Speaker 03:
So even putting aside everything that happened before 1961, we have many, many years, 55 years or something, of the patent community relying on the ability to do both on the same day.

[00:26:32] Speaker 04:
Okay, there are two aspects of that.

[00:26:34] Speaker 04:
There's an argument they've made about congressional ratification, and then there's the aspect of the public reliance.

[00:26:39] Speaker 04:
So if you like, I'll go right to the reliance because that appears to be the heart of your... I'm interested in the other one too, but take them in any order you want.

[00:26:46] Speaker 04:
Whichever you like.

[00:26:47] Speaker 04:
Let's go with the reliance because I think that's what we've had the most questions about.

[00:26:51] Speaker 04:
Let's remember, this is the MPEP.

[00:26:53] Speaker 04:
It has no force of law.

[00:26:55] Speaker 04:
It is simply an agency manual.

[00:26:57] Speaker 04:
It doesn't get any Chevron deference.

[00:26:59] Speaker 04:
It's beyond the Chevron pale.

[00:27:01] Speaker 04:
It does say

[00:27:02] Speaker 04:
that they'll accept it on or before.

[00:27:04] Speaker 04:
However, if you keep going in the same paragraph, it also tells you send in your continuation application when you send in the money to get your issuance of your patent.

[00:27:16] Speaker 04:
It tells you do that because you don't want to risk losing your continuation date.

[00:27:20] Speaker 04:
In any event, people are not entitled to

[00:27:23] Speaker 03:
I'm sorry, but that would make perfect sense because of the perhaps theoretical possibility that they might actually issue the thing before they send it.

[00:27:32] Speaker 04:
By the way, you do get notice.

[00:27:33] Speaker 04:
You get notice in a couple of weeks.

[00:27:34] Speaker 04:
They knew exactly when it was, and they chose to file on the date.

[00:27:36] Speaker 03:
In your experience, do patents ever issue before the projected date?

[00:27:41] Speaker 04:
I've never seen it.

[00:27:42] Speaker 03:
It's like filing a brief early.

[00:27:44] Speaker 03:
Well, no, no.

[00:27:48] Speaker 04:
You file a brief on a due date because it's on or before that date.

[00:27:51] Speaker 01:
Let me just follow up on the point you make about the MPP, and it doesn't carry the weight of law, but we're dealing with clearly a procedural matter.

[00:28:00] Speaker 01:
So isn't it a fact that patentees, people who deal with the Patent Office on strictly procedural matters, would look to the MPP for guidance?

[00:28:11] Speaker 04:
They might, but they can't rely on the MPP to have a force of law and to be binding on the PTO.

[00:28:17] Speaker 04:
Let's keep in mind here that the numbers that they've been talking about in their briefs

[00:28:22] Speaker 04:
whether it's 10,000 or 13,000, those are the number of patents that potentially might be affected by the issue here.

[00:28:28] Speaker 04:
That's far less than 1% of all issued patents.

[00:28:31] Speaker 04:
Very few people are actually relying in this sense.

[00:28:35] Speaker 04:
Second of all, as to those particular patents, only a small number of them are really going to be affected.

[00:28:42] Speaker 04:
And that's because only a small number of patents are actually maintained and enforced.

[00:28:46] Speaker 04:
And it would have to be a case in which there's intervening art that's going to make a difference to the result.

[00:28:50] Speaker 04:
It wouldn't have been invalid, not infringed or unenforceable otherwise.

[00:28:54] Speaker 04:
We're not talking about a flood here.

[00:28:56] Speaker 04:
We're talking about, at most, a trickle, a tiny number of patents in our view.

[00:29:00] Speaker 04:
They haven't been able to point to a single instance outside of this case.

[00:29:04] Speaker 04:
This is a very unusual case.

[00:29:06] Speaker 01:
Well, why don't you follow up with Judge Toronto's second part about congressional ratification?

[00:29:10] Speaker 04:
Sure, congressional ratification.

[00:29:12] Speaker 03:
Again, we're talking... Or any other legally relevant basis for taking into account reliance on the assumption now that there has been some.

[00:29:22] Speaker 03:
I agree it's an assumption.

[00:29:24] Speaker 04:
I'll start with congressional ratification, then I'll turn to the agency deference doctrines, if you like.

[00:29:30] Speaker 04:
As far as the congressional ratification, I think the short answer is from this court's Donaldson opinion on Bonk in 1994.

[00:29:39] Speaker 04:
The fact

[00:29:40] Speaker 04:
that the PTO may have failed to adhere to a statutory mandate over an extended period of time does not justify its continuing to do so.

[00:29:48] Speaker 04:
This isn't the case where you can assume that Congress adopted this.

[00:29:53] Speaker 04:
This is not something that Congress has looked at.

[00:29:56] Speaker 04:
There was no testimony before Congress.

[00:29:57] Speaker 04:
There's no settled judicial interpretation.

[00:30:00] Speaker 04:
And we've had two district judges looked at this since then, and they've reached different results.

[00:30:04] Speaker 04:
This court declined to reach the issue in Encyclopedia Britannica.

[00:30:07] Speaker 04:
There's no settled judicial interpretation.

[00:30:09] Speaker 04:
There's no longstanding regulation with force of law.

[00:30:13] Speaker 04:
Congress never looked at it.

[00:30:14] Speaker 04:
Congressman don't stay up at night reading the MPEP.

[00:30:17] Speaker 04:
This is an obscure practice that really they were unaware of.

[00:30:20] Speaker 03:
There's no reason to infer.

[00:30:21] Speaker 03:
But people who are in their offices talking to their staff about drafts of legislation do.

[00:30:28] Speaker 04:
Not in the MPEP.

[00:30:30] Speaker 04:
This has never come up.

[00:30:32] Speaker 04:
Section 120 is a law and statute.

[00:30:33] Speaker 04:
It has been amended in other respects, but there's been no indication

[00:30:37] Speaker 04:
that Congress has ever looked at this particular issue, I think there would be a great overextension of congressional silence.

[00:30:43] Speaker 03:
And this is not, and I don't think the other side has pointed to anything along these lines.

[00:30:48] Speaker 03:
Sometimes you get ratification in the sense that Congress has done something that makes no sense if you accept on the assumption of some previous interpretation.

[00:31:02] Speaker 04:
There's no such argument here.

[00:31:04] Speaker 04:
So if you like, I can turn to Chevron.

[00:31:07] Speaker 04:
And again, we know from the Supreme Court that mere agency manuals of procedure are, quote unquote, beyond the Chevron pale.

[00:31:17] Speaker 04:
Basically, the idea of Chevron is you infer that Congress gave the agency the authority to make regulations with force of law, and then you defer when they have done so.

[00:31:28] Speaker 04:
we can debate whether this is substantive.

[00:31:29] Speaker 03:
Formality is not strictly required, right, for something to be given chevron deference.

[00:31:35] Speaker 03:
So why does chevron deference or the substantive equivalent of it not apply when you start with terms filing and patenting?

[00:31:49] Speaker 03:
and say in this provision or this clause of the provision, there's no specification of granularity at the level of day.

[00:31:58] Speaker 03:
And forever, the BTO has in fact been saying what it is defending here.

[00:32:08] Speaker 04:
I think this is a matter of Skidmore deference, not Chevron deference.

[00:32:11] Speaker 04:
Because again, Chevron applies when you've got something with force of law that you're

[00:32:16] Speaker 04:
Congress has given the agency the authority to regulate with force of law, and the agency has done so.

[00:32:21] Speaker 04:
The agency has not regulated with force of law here.

[00:32:24] Speaker 04:
I don't think they could, but even assuming they could, they haven't.

[00:32:27] Speaker 04:
So you're really kind of getting down to Skidmore deference at that point.

[00:32:31] Speaker 04:
I will add that the government has argued that you should defer to regulation 1.78D.

[00:32:37] Speaker 04:
But that has nothing in there about before the patenting.

[00:32:40] Speaker 03:
That just repeats the co-pending.

[00:32:42] Speaker 03:
Right.

[00:32:43] Speaker 03:
So what's your response to the suggestion that co-pending in the formal regulation 178 has a clear meaning when you understand that it comes from Godfrey?

[00:32:55] Speaker 04:
Oh, actually, again, we have no dispute with Godfrey.

[00:32:58] Speaker 03:
Our point is that... And so why does Godfrey not indicate that you

[00:33:04] Speaker 03:
get to reach back even when these events occur on the same day.

[00:33:08] Speaker 03:
And the way Godfrey, the language Godfrey used, sure suggests that the withdrawal happened before the refiling, before in the less than day to day granularity sense.

[00:33:18] Speaker 04:
Well, Godfrey didn't have a Section 120.

[00:33:21] Speaker 04:
The statute was written to kind of adopt a rule around some of the existing practice regarding Godfrey.

[00:33:28] Speaker 04:
But what it used was the term before the patenting, and that didn't exist at that time.

[00:33:31] Speaker 04:
Godfrey was dealing with the situation of continuing applications when you're basically getting rid of your original application.

[00:33:38] Speaker 04:
Today, what the statute refers to is abandonment or termination of proceedings.

[00:33:43] Speaker 04:
And today, as then, the abandonment or termination of proceedings did not occur until the PTO acted upon it.

[00:33:51] Speaker 04:
And for good reason, because if you made a mistake in your continuing application in the old days, for example, you didn't include claims.

[00:33:57] Speaker 04:
You're done.

[00:33:57] Speaker 03:
So what was the significance in Godfrey?

[00:34:01] Speaker 03:
of what, why did the court take the trouble to say, um, the withdrawal and refiling, um, amount to a single continuing thing.

[00:34:10] Speaker 03:
But what was the legal consequence?

[00:34:12] Speaker 03:
Right.

[00:34:12] Speaker 04:
And that you ought to remember what's going on is that there's one person filing two things at the same time and intended to keep them all as a continuing application.

[00:34:20] Speaker 04:
Patenting is different.

[00:34:21] Speaker 04:
Patenting is fundamentally different because it's not one person just filing papers.

[00:34:25] Speaker 04:
You've got two different entities acting.

[00:34:27] Speaker 04:
You've got the applicant that's filing the application.

[00:34:30] Speaker 04:
And then you've got the PTO issuing the patent.

[00:34:32] Speaker 04:
And that's not an ex parte procedure, by the way.

[00:34:34] Speaker 04:
The issuing the patent has real effects on real people out there in the general public.

[00:34:39] Speaker 04:
We need to know exactly what the date is.

[00:34:42] Speaker 04:
The patenting date is very clear.

[00:34:44] Speaker 04:
It's set in section 154, and it's critical to both patentees who want to run into court and sue to stop the issuing pharmaceutical, you know, that somebody's going to launch their pharmaceutical and they want to get an injunction or they want payment.

[00:34:55] Speaker 03:
If I understand right, the point you were just making in trying to distinguish Godfrey

[00:34:59] Speaker 03:
Doesn't it run a little bit counter to your earlier point that almost metaphysically there's an application and there's a patent and there's a very clean line between those?

[00:35:13] Speaker 04:
And that's not true for applications.

[00:35:16] Speaker 04:
You can have copending applications.

[00:35:17] Speaker 04:
In fact, that's what's required.

[00:35:19] Speaker 04:
There's no inconsistency with having two applications overlap.

[00:35:22] Speaker 03:
Right, but I guess the concern that I'm, or the question I guess I'm trying to explore is in Godfrey,

[00:35:28] Speaker 03:
One way in which the first application might have gone away and not be copending is withdrawal.

[00:35:35] Speaker 03:
The other is if it actually ripened into an issue patent.

[00:35:38] Speaker 03:
And I'm not sure why the copending substantive point made by Godfrey should be different depending on in which way the application went away.

[00:35:51] Speaker 04:
We believe that both are consistent with the copendency idea because the PTO

[00:35:57] Speaker 04:
does not terminate proceedings or deem an application to have been abandoned until the PTO looks at it and says, proceedings are done.

[00:36:05] Speaker 04:
The application is deemed filed when mailed by current regulation, adopted pursuant to an explicit statute, and

[00:36:16] Speaker 04:
the termination of proceedings.

[00:36:18] Speaker 03:
So you're saying that Godfrey's reasoning depended on the idea that when the court said they withdrew it, that the withdrawal hadn't taken effect yet?

[00:36:28] Speaker 04:
No.

[00:36:28] Speaker 04:
My point is that Godfrey wasn't dealing with a statute dealing with the words before the patent thing.

[00:36:33] Speaker 04:
What Godfrey was saying is there's one continuous process here, and there was always an application pending.

[00:36:41] Speaker 04:
There was the original application, and there was what we now call a continuing application.

[00:36:45] Speaker 04:
The term didn't exist back then.

[00:36:47] Speaker 04:
And that made sense the way it's going.

[00:36:49] Speaker 04:
But here, we have a different scenario.

[00:36:51] Speaker 04:
We have an application going along, and then it becomes a patent.

[00:36:55] Speaker 04:
It is binary.

[00:36:56] Speaker 04:
And so the real question comes down to, do you agree with me whether the patenting occurs on a particular day rather than at a particular moment?

[00:37:04] Speaker 04:
I submit that it does, because the Patent Act tells you that the term runs from the date of issuance.

[00:37:10] Speaker 04:
And that's the only way to understand what patenting means.

[00:37:12] Speaker 04:
It can't be the date.

[00:37:14] Speaker 04:
on which the PTO notifies that you're going to get a patent or when it allows a patent.

[00:37:20] Speaker 04:
If you get a notice of allowance, you can still go back and not pay your issue fee or try to amend your claims because you've discovered intervening art.

[00:37:26] Speaker 04:
There's nothing about the notice of allowance that constitutes patenting, nor does the notification that you get that on such and such a date, on August 6, 2002, you're going to get a patent.

[00:37:36] Speaker 04:
That means you're going to get a patent.

[00:37:37] Speaker 04:
It's August 6 that you've got the patent, and you can enforce that patent all day long.

[00:37:43] Speaker 04:
It has to be the rule.

[00:37:45] Speaker 04:
There's no other way to read the statute.

[00:37:48] Speaker 04:
I understand that if you just read the words before the patenting, it doesn't say before the date of the patenting.

[00:37:52] Speaker 04:
But you must construe that in light of the entire statute.

[00:37:55] Speaker 04:
And the entire statute and historical practice tells you that it's always been determined by the day, not by the hour, the minute, or the moment.

[00:38:03] Speaker 04:
There's really no other way to look at it.

[00:38:05] Speaker 04:
Now, I think we were, I don't know if you want me to discuss hour or Skidmore.

[00:38:10] Speaker 04:
I think we got to Skidmore.

[00:38:15] Speaker 04:
Skidmore is basically the weakest doctrine of deference.

[00:38:17] Speaker 04:
It depends on the ability of the rationale of the agency to persuade.

[00:38:23] Speaker 04:
And in the MPEP itself, it doesn't have any rationale other than to say honor before equals before.

[00:38:30] Speaker 04:
And that's contrary to United States versus Locke, which tells you that they're obviously different, quote unquote.

[00:38:37] Speaker 04:
We do have an amicus free from the government.

[00:38:39] Speaker 04:
It's a post hoc rationalization in the Supreme Court's terms.

[00:38:43] Speaker 04:
But you can look at it for its persuasive value, but I think it's wrong because, again, it's relying on ambiguities about the dates of patenting and filing.

[00:38:51] Speaker 04:
There is no ambiguity about the date of filing.

[00:38:55] Speaker 04:
We know it's a filing date.

[00:38:56] Speaker 04:
There's no ambiguity about the time of patenting.

[00:38:59] Speaker 04:
It is a date.

[00:39:00] Speaker 03:
Just to state the obvious, 120 doesn't say the date of filing in the relevant portion of the provision.

[00:39:10] Speaker 04:
It doesn't.

[00:39:11] Speaker 04:
Well, it does refer to the date.

[00:39:13] Speaker 03:
At heart, I gather your argument is, everywhere else in the Patent Act you look, time is measured in days and not in anything else.

[00:39:22] Speaker 03:
So why not here?

[00:39:24] Speaker 04:
Yes.

[00:39:24] Speaker 04:
Well, and also in 120 itself, it refers to the application date of the first one.

[00:39:28] Speaker 04:
And there's no reason to think the application of the second application would be judged in different units than the timing of the first application.

[00:39:36] Speaker 04:
And in fact, again, the statute expressly refers to application dates.

[00:39:40] Speaker 04:
And to me, that means you've got to compare apples and apples.

[00:39:44] Speaker 04:
And remember, I think what's going on here is emergence trying to have its cake and eat it too.

[00:39:48] Speaker 04:
You either have a patent or you have an application.

[00:39:50] Speaker 04:
And once you have your patent enforced, they wanted to collect damages for the date of issuance.

[00:39:55] Speaker 04:
You can't do that if it's still an application.

[00:39:58] Speaker 04:
And in the IPOs brief, for example, they were saying, well, effectively the PTO has said that before means no later than, and that they've effectively deemed patents to have been issued at the end of the day.

[00:40:11] Speaker 04:
Well, that can't be right.

[00:40:12] Speaker 04:
The statute says the term runs from the date of issuance.

[00:40:15] Speaker 04:
It doesn't run from the next day.

[00:40:16] Speaker 03:
The only way to... But if one is thinking in less than day level of time limits, you don't have to get to the end of the day in order to capture the events of the day because you can subdivide it infinitely.

[00:40:34] Speaker 03:
Call it 1201 and 1202, but make it even finer.

[00:40:38] Speaker 04:
In my view, whatever it's done at the date level, and if the patent is enforced, it is no longer an application.

[00:40:47] Speaker 04:
And the implication of that is that to file before the patenting, which occurs at a day level, it needs to be the day before.

[00:40:54] Speaker 04:
And again, they're warned of what that date is.

[00:40:58] Speaker 04:
They deliberately chose to file.

[00:41:00] Speaker 04:
This is Emergent's in-house counsel.

[00:41:01] Speaker 04:
They deliberately chose to file.

[00:41:02] Speaker 04:
on that date and not before that date.

[00:41:05] Speaker 04:
And they relied at their peril.

[00:41:09] Speaker 04:
We haven't seen any evidence that they specifically relied on this MPEP provision.

[00:41:14] Speaker 04:
But if they did, they didn't read to the end of the paragraph because they would have sent in their money earlier.

[00:41:18] Speaker 04:
And if they did, they should have read the statute first.

[00:41:22] Speaker 04:
If you would like, I can address the summary judgment or anything else?

[00:41:27] Speaker 01:
I think we're right out of time.

[00:41:38] Speaker 06:
Council invoked repeatedly US versus Locke.

[00:41:40] Speaker 06:
The statute there was very different.

[00:41:42] Speaker 06:
The filing had to be made before December 31st, before a date.

[00:41:47] Speaker 03:
I guess I do think that the argument on the other side is something quite like what I tried to summarize.

[00:41:57] Speaker 03:
Everywhere in the Patent Act that you look, and indeed elsewhere in 120 itself, time is measured in units of days.

[00:42:05] Speaker 03:
So how could this not be?

[00:42:09] Speaker 06:
I think that's a point for us, not against us, Judge Toronto.

[00:42:12] Speaker 06:
When Congress wanted to specify something happening before a date, it did so expressly.

[00:42:16] Speaker 06:
And here, as Judge Lynn pointed out, it instead provided that something had to happen before the patenting, which is, as you said, a squishy concept, something that there's no particular... So let me just see if I understand.

[00:42:28] Speaker 01:
So it says, it leads right into it.

[00:42:30] Speaker 01:
It says, filed on the date of the prior application, if filed before the patenting.

[00:42:33] Speaker 01:
So you're suggesting that because Congress didn't say,

[00:42:37] Speaker 01:
filed on the date before the patenting that we should read some affirmative intent to not include the date in there?

[00:42:46] Speaker 06:
I read affirmative intent not to foreclose the PTO from observing the long-standing practice of allowing same-day filings because it didn't say the date.

[00:42:56] Speaker 06:
Instead, it defined the term with respect to the administrative occurrence itself, and nowhere does the statute specify

[00:43:03] Speaker 06:
what exactly the patenting is or when exactly it happens.

[00:43:05] Speaker 01:
And there's certainly no legislative history or evidence that Congress considered this in 1952 or did this affirmatively at all, right?

[00:43:14] Speaker 06:
Well, not with respect particularly to the issue that we're talking about, but there's ample legislative history that Congress in 1952 intended to adopt wholesale the pre-1952 continuation application process.

[00:43:26] Speaker 06:
This court has said that.

[00:43:28] Speaker 06:
The legislative history says it expressly.

[00:43:30] Speaker 06:
unless there is a change and there was only one change as I pointed out before and it wasn't this council talked about section one 54 about the patent term.

[00:43:39] Speaker 06:
But again, that is a, that is a provision that uses a date.

[00:43:43] Speaker 06:
It talks about a patent term beginning on the date on which the patent issues.

[00:43:48] Speaker 03:
Can you just address the fact that at least part of one 20 refers to the date as well?

[00:43:55] Speaker 06:
Right.

[00:43:56] Speaker 06:
Part of one 20, you get the benefit of the,

[00:44:00] Speaker 06:
filing date of the earlier application.

[00:44:03] Speaker 06:
So that's a case where Congress meant to key a timing requirement off of a date, but it didn't do so here and nothing in 154.

[00:44:12] Speaker 03:
It does seem to me you're right that in the law, when there is a disparity in language,

[00:44:24] Speaker 03:
And you're trying to figure, and one of them is the odd man out, and you're trying to figure out what meaning to give it.

[00:44:30] Speaker 03:
Sometimes you say, oh, let's pay attention to the fact that there's a difference and there must be an intent to make it different.

[00:44:38] Speaker 03:
And sometimes one says, we're going to treat it the same way as everything surrounding it.

[00:44:48] Speaker 03:
What is the evidence, I guess, that

[00:44:55] Speaker 03:
The odd man out here was deliberately an odd man out.

[00:44:59] Speaker 03:
Or is it just that, I mean, would you immediately fall into, well, in the absence of a resolution, PTO gets to decide, and they have consistently?

[00:45:12] Speaker 06:
Right.

[00:45:12] Speaker 06:
Judge Toronto, you put your finger on the fact that there could be two forms of the argument.

[00:45:17] Speaker 06:
There could be a strong form of the Rousseau argument that HTC's understanding is

[00:45:23] Speaker 06:
foreclosed by the statute because it didn't use this date of formulation, I would suggest that the history might support that kind of argument, but I don't think I have to convince you of that.

[00:45:33] Speaker 06:
I'm suggesting that the absence of the date of the patenting means that Congress did not foreclose long-standing historical practice.

[00:45:43] Speaker 06:
It did not mean to alter it, because if it had done that, if it had put in the date of, this would be a very different case.

[00:45:51] Speaker 06:
But it didn't do that.

[00:45:52] Speaker 06:
It was silent.

[00:45:53] Speaker 06:
And in the light of that silence, we can assume that Congress intended pre-existing practice to be adopted.

[00:45:59] Speaker 06:
And of course, the history doesn't end in 1952.

[00:46:01] Speaker 06:
It continues.

[00:46:03] Speaker 06:
This MPEP rule has been on the books since 1961.

[00:46:07] Speaker 06:
Congress has repeatedly amended Section 120.

[00:46:10] Speaker 06:
It once reenacted it in its entirety.

[00:46:13] Speaker 06:
And under this Court's decision in Cooper Technologies and the Supreme Court's decision in Auburn Regional Medical Center, there's no requirement that there be evidence in the record that Congress

[00:46:22] Speaker 06:
uh, cited this provision, it's presumed to know what the PTO publishes about its practice.

[00:46:27] Speaker 03:
And when it repeatedly amends section one 20 and repeatedly, I think it was Mr. Bagatell that I asked the question and he said, we don't, whatever else we have here, we don't have any, um, um, congressional action whose logical sensibleness depends on accepting

[00:46:47] Speaker 03:
the view that you're arguing, right?

[00:46:51] Speaker 06:
No, we don't make that particular argument.

[00:46:53] Speaker 03:
We just rest on the fact that... Like in 119 and the plant patent.

[00:46:57] Speaker 03:
Right.

[00:46:58] Speaker 06:
We're not making that kind of argument, but what we're invoking is this court's precedent saying Section 120 was meant to adopt settled continuation practice going back to Godfrey v. Ames.

[00:47:09] Speaker 06:
And I think the reliance interests that we have talked about are profoundly important here.

[00:47:13] Speaker 06:
I think there are a few cases that present

[00:47:15] Speaker 06:
this degree of widespread, profound, very specific reliance on a rule issued by a regulator saying, you can protect your intellectual property if you file on this date.

[00:47:27] Speaker 06:
And tens of thousands of patentees relied in good faith on that rule.

[00:47:32] Speaker 06:
And as Mr. Schultz said, there are ample precedent for the fact that that is another deference doctrine and a reason to defer to the PTO's long-settled construction.

[00:47:41] Speaker 06:
Thank you.

[00:47:42] Speaker 06:
Thank you.

[00:47:42] Speaker 06:
We thank all parties, and the case is submitted.