[00:00:00] Speaker 05: We have four arguments today, two related cases, and we will begin with 15-1457, in rape active. [00:00:11] Speaker 05: Mr. Schulman, whenever you're ready. [00:00:18] Speaker 03: May it please the court? [00:00:20] Speaker 03: The court should reverse the PTAB in both cases on appeal for two reasons. [00:00:25] Speaker 03: First, the PTAB affirmed rejections in which the PTO overstepped its statutory bounds. [00:00:30] Speaker 03: when it read the defining clause of the reexamination statute, quote, for resolution of the question out of 35 USC sections 303 and 304. [00:00:40] Speaker 03: Doing so, not only rewrote the statute, converting the reexamination to a reissue without any of the procedural safeguards of a reissue, but violated this court's precedent and deprived the patent owner of the statutorily allotted opportunity. [00:00:53] Speaker 04: So the new art they relied on [00:00:55] Speaker 04: Was it previously rejected by anybody at PTO as not raising a substantial new question? [00:01:02] Speaker 03: So, Your Honor... That's really a yes or no question. [00:01:06] Speaker 03: Some of the art was before the PTO prior to being submitted. [00:01:10] Speaker 04: But had they made a determination that that art did not raise a substantial new question? [00:01:15] Speaker 03: Implicitly, they must have, Your Honor, and the basis for that is the reexamination statute. [00:01:20] Speaker 04: The reexamination statute... Well, let's assume that I want it to be explicit. [00:01:24] Speaker 04: They didn't make an explicit determination that this didn't raise a substantial new question. [00:01:29] Speaker 04: They did not, but nor... Isn't that the basis for Belkin, that it had already been rejected as raising a substantial new question, so it couldn't be reconsidered? [00:01:39] Speaker 03: Your Honor, there's no statutory basis for considering the statute based on something that the director did in Belkin, which the statute doesn't authorize him to do, nor requires him to do. [00:01:50] Speaker 03: Section 303A, the court can rely on this just based on statutory construction with Belkin merely confirming. [00:01:57] Speaker 04: I don't see how Belkin's at all relevant because we're not talking about art that had been rejected by the director or his or her designee and then tried to be resuscitated. [00:02:08] Speaker 04: We're talking about art that had never been explicitly considered to raise a substantial new question. [00:02:14] Speaker 04: That, to me, doesn't make any difference. [00:02:16] Speaker 04: I mean, Belkin doesn't seem to answer that question at all. [00:02:19] Speaker 04: And whether those two statutes are the same and have same purposes or not seems irrelevant because we're in a different factual circumstance. [00:02:27] Speaker 03: Your Honor, in Belkin, it directly on page 1383 of the decision is talking about Section 303A. [00:02:35] Speaker 03: And it says that once a re-examination order has been issued, [00:02:40] Speaker 03: The re-examination quote may not include other prior art than what constituted the basis of the director's determination of substantial question of patentability. [00:02:49] Speaker 03: Now, Section 303A of the re-examination statute says, within three months following the filing of a request for re-examination under the provisions of Section 302 of this title, which incorporates the citation of prior art under 301. [00:03:02] Speaker 03: So that's your third party request. [00:03:04] Speaker 03: The director will determine whether a substantial new question of patentability [00:03:07] Speaker 03: affecting any claim of the patent concern is raised by the request with or without consideration of other prior art or printed publications. [00:03:15] Speaker 03: So what the statute is saying is prior to identifying the SNQ, the examiner is not confined, the director is not confined to just what was cited. [00:03:24] Speaker 03: It gives the examiner the opportunity to go beyond and expand that scope prior to finding the SNQ. [00:03:31] Speaker 03: What Belkin says is once that SNQ is found, [00:03:34] Speaker 03: You are then confined to what's in the SNQ. [00:03:36] Speaker 04: Well, I think you're over-reading what we did in Belkin, because what we were concerned about there was art that had already been rejected. [00:03:43] Speaker 04: It doesn't seem to make any sense that we meant to extend that beyond the facts of that case to art that hadn't been considered. [00:03:50] Speaker 03: Well, Your Honor, even if Belkin doesn't apply, we can still look at the statute, and the statute still compels the result that we're advocating for. [00:03:58] Speaker 03: Oh, go ahead. [00:03:58] Speaker 02: Mr. Showman, is it your position that once the examiner [00:04:04] Speaker 02: issues of rejection on the merits and the applicant responds either with an argument or an amendment or both that the Patent Office is constrained to the art of record and can't cite additional art to respond? [00:04:19] Speaker 02: That is correct, Your Honor. [00:04:20] Speaker 02: Now if that's the case then why are patent owners obligated to file an IDS? [00:04:27] Speaker 03: Well, Your Honor, patent owners are obligated to file an IDS under the regulations under the MPEP. [00:04:32] Speaker 03: It may not [00:04:34] Speaker 03: fit neatly into the statutory construction. [00:04:37] Speaker 02: So according to you, patent owners are obligated to file an IDS and cite new references, but the examiner can't do anything with those references. [00:04:46] Speaker 03: Respectfully, Your Honor, that's not true. [00:04:48] Speaker 03: So there are different reasons for filing an IDS. [00:04:51] Speaker 03: So for one thing, the examiner can. [00:04:54] Speaker 03: Under Section 303, the director can at any time do a sponte. [00:04:58] Speaker 03: begin a new re-examination process by finding a new substantial question of patentability. [00:05:02] Speaker 02: But isn't that, in effect, what happens when the examiner makes a new rejection, citing new references? [00:05:10] Speaker 02: No. [00:05:10] Speaker 02: The examiner would not make a new rejection if there wasn't a substantial question of patentability. [00:05:15] Speaker 03: But the substantial new question of patentability is a creation of the statute, which creates a timeline of things that must happen. [00:05:21] Speaker 03: So if you do it as the patent office did it here, you are depriving the patent owner [00:05:26] Speaker 03: of the statutorily allotted opportunities to respond to that SMQ. [00:05:30] Speaker 05: So, for example... You got your two months after the initial rejection, right? [00:05:35] Speaker 05: Minus a day or something, I think you... Correct. [00:05:38] Speaker 05: So, what is the... And I do want to get back to something else that seems important to me, because I don't understand it very well, but as a practical matter, what would assuming, and this is what I'll get to in a minute, that the examiner can actually do this, though I'm not sure the examiner can, [00:05:57] Speaker 05: What is the practical difference between the examiner saying, I reject, necessarily. [00:06:02] Speaker 05: There's a substantial question of patentability. [00:06:04] Speaker 05: I actually think there's a meritorious patentability objection. [00:06:11] Speaker 05: And you get your two months. [00:06:13] Speaker 03: Where's the prejudice? [00:06:14] Speaker 03: So, Your Honor, it's the amount of opportunities that you get to respond. [00:06:17] Speaker 03: And we were prejudiced absolutely here. [00:06:19] Speaker 03: So if you follow the statute, statute says in 303, 304, and 305, [00:06:25] Speaker 03: A substantial new question of patentability is found. [00:06:27] Speaker 03: The applicant gets the first opportunity as of right to respond to that substantial new question of patentability by filing an optional patent owner's statement. [00:06:37] Speaker 03: Then if there is a non-final rejection, the applicant gets another opportunity as of right to respond to that rejection, that substantial new question of patentability. [00:06:46] Speaker 03: Then after final, the applicant may get another opportunity, although it's discretionary, [00:06:51] Speaker 03: whether or not it can be entered in at that point. [00:06:54] Speaker 05: Let me just ask and I do want to get back to the question that I have been focused on before we started this conversation. [00:07:02] Speaker 05: I don't see that you have made a case in this particular case for how you were prejudiced in the usual concrete sense of saying [00:07:15] Speaker 05: Had we had the several stages of opportunity, we would have said or introduced evidence on X, and we didn't get the chance. [00:07:24] Speaker 05: So, Your Honor... And I don't see any argument of that sort in your brief. [00:07:28] Speaker 03: So, Your Honor, there's a substance of prejudice. [00:07:31] Speaker 03: First of all, had the examiner been confined to the SNQ, which the statute says, for resolution of the question, had that happened, the re-examination would have terminated four years ago when the examiner [00:07:44] Speaker 03: did not reject the claims based on any SNQ or did not reject at least most of the claims based on any SNQ. [00:07:50] Speaker 03: Had that happened, substantively, we would have been back in the district court on a case that's been state for six years. [00:07:55] Speaker 05: That's a different and it seems to me a more aggressive position that you win. [00:08:03] Speaker 05: Let me focus on the following. [00:08:06] Speaker 05: When I read the regulations, in particular, 1-5-15 and 1-5-20, [00:08:12] Speaker 05: 1515 says in the ex parte re-exam, the examiner examines the SNQ question on the request. [00:08:24] Speaker 05: 1520 says the director at any time can declare an SNQ. [00:08:33] Speaker 05: I do not see and I'd like to know if you know of one and if it makes a difference. [00:08:38] Speaker 05: any delegation from the director to the examiner to make his own or her own sua sponte SNQ determination. [00:08:52] Speaker 03: I know that under patent office policies, the director has delegated that responsibility to the examiner. [00:09:01] Speaker 05: I haven't been able to find one. [00:09:03] Speaker 05: I saw that there was in 2010 a notice in the Federal Register that [00:09:09] Speaker 05: probably did not actually do that, but addressed only going to the board to challenge an examiner's SNQ determination. [00:09:20] Speaker 05: But it's not clear to me that that goes beyond 1.515, that is, the ones based on the request. [00:09:25] Speaker 05: And then I saw something which I think the PTO, the director, pointed to not in this round of briefing, but back in 2014, about an April 2013 letter saying the chief judge of the [00:09:37] Speaker 05: board can make certain determinations. [00:09:40] Speaker 05: I'm not entirely sure what those determinations are from the letter, but I don't see anything, and I'm very curious, that delegates to the examiner the authority to make sui sponte SNQ determinations. [00:09:53] Speaker 05: And if there isn't such a thing, [00:09:55] Speaker 05: then it feels to me like there's a problem with the director saying what logically does make sense when the examiner found unpatentability on these new grounds necessarily. [00:10:08] Speaker 05: This is a she examiner, right? [00:10:10] Speaker 05: She found a substantial new question of patentability. [00:10:14] Speaker 05: Yes, Your Honor. [00:10:15] Speaker 05: I don't know where the authority comes to do that. [00:10:17] Speaker 03: Your Honor, we're not aware of any authority, and we did raise that previously. [00:10:23] Speaker 03: We didn't raise it here. [00:10:25] Speaker 03: because we felt the statutory construction argument was determinative whether or not the director delegated to the examiner. [00:10:34] Speaker 05: Can I ask a question on perhaps sort of a threshold matter? [00:10:38] Speaker 05: Yes. [00:10:39] Speaker 05: How is it possible for this court in 2014 to have affirmed without rejecting this legal contention about the statutory contention [00:10:53] Speaker 05: about SNQs and re-exam, which is not in any way claim-specific. [00:10:58] Speaker 03: Your Honor, it actually is claim-specific. [00:11:00] Speaker 03: And that's a difference between this appeal and the prior appeal. [00:11:04] Speaker 03: So in the prior appeal, all of the claims that were at issue were amended very early on. [00:11:10] Speaker 03: Whereas in this appeal, claims 1 through 10 of the 195 patent and 1 through 12 of the 921 patent were never amended. [00:11:18] Speaker 03: So this court may have adopted. [00:11:20] Speaker 03: the argument that we're advocating, which is that the examiner is confined to the SNQ, but then reach the different conclusion on the open question from Belkin, what happens to amended claims? [00:11:30] Speaker 03: This court doesn't necessarily need to reach that. [00:11:34] Speaker 05: Did you say that all of the claims in the earlier case were amended claims? [00:11:38] Speaker 03: All of the claims in the earlier case were amended at some point. [00:11:42] Speaker 03: And so the court may not have been comfortable going quite that far, whereas here, half of the claims in each of the appeals, so there was claims 1 through 12, which were never amended in the 921, [00:11:51] Speaker 03: and then claims 13 through 28. [00:11:54] Speaker 04: Wait, so are you trying to make a distinction between amended claims and non-amended claims? [00:11:58] Speaker 04: Because I didn't get that from your brief. [00:12:01] Speaker 03: Well, only for purposes of the collateral estoppel issue. [00:12:05] Speaker 03: That is a distinction between those two appeals. [00:12:09] Speaker 03: That's in answer to Judge Taran's question. [00:12:11] Speaker 04: Well, I don't understand what you're saying. [00:12:12] Speaker 04: Are you saying implicitly there we said you [00:12:16] Speaker 04: the examiners could raise an S&Q for amended claims, but not for non-amended claims? [00:12:21] Speaker 03: Your Honor, I see I'm in my rebuttal time. [00:12:23] Speaker 03: May I answer that question? [00:12:25] Speaker 03: Yes. [00:12:27] Speaker 03: No. [00:12:27] Speaker 03: What we're saying is that the full resolution of the question language of the statute requires the examiner to resolve the question however it's resolved, whether by arguing over prior art or amending the claims period. [00:12:39] Speaker 03: It says resolution of the question without creating a special class of how that question is resolved. [00:12:44] Speaker 03: That's a separate issue. [00:12:45] Speaker 03: and why amended claims should still terminate the reexamination. [00:12:50] Speaker 03: In response to Judge Toronto's question about was there a specific issue that may have compelled that decision, which was a Rule 36, to sit without any written decision, in this case I was merely pointing out that in that case they may have [00:13:04] Speaker 03: The court may have agreed with us on the threshold examination issue. [00:13:07] Speaker 04: If that was our legal reasoning, then it seems to suggest that there was a distinction and that logically we could apply that distinction here. [00:13:15] Speaker 04: I don't see any distinction in the statute, though. [00:13:18] Speaker 03: There is no distinction in the statute, which is our argument. [00:13:20] Speaker 03: I was merely responding to the issue of whether or not collateral estoppel would apply to prevent this appeal from going forward. [00:13:27] Speaker 03: Thank you. [00:13:31] Speaker 05: We'll restore two minutes. [00:13:32] Speaker 05: Thank you. [00:13:39] Speaker 05: Who addressed my delegation question? [00:13:41] Speaker 05: Cause I'm stumped about where the examiner has authority to exercise the director's authority to determine an SNQ. [00:13:50] Speaker 01: Um, with respect to rule five 15 is what you're talking about. [00:13:57] Speaker 05: And this is a rule civilly with respect to five 20. [00:14:01] Speaker 05: That's the one that, that said that addresses the suicide. [00:14:04] Speaker 05: Five 15 is a determination of the request. [00:14:08] Speaker 05: the grounds in the request. [00:14:10] Speaker 01: Right. [00:14:10] Speaker 01: And 515 provides that the examiner can make a determination with response, with response to a request. [00:14:19] Speaker 05: Right. [00:14:19] Speaker 05: And that's not, that doesn't cover grounds that are not in the request. [00:14:26] Speaker 05: And that's what we're dealing with here. [00:14:28] Speaker 05: Prior art grounds that were not in the request, right? [00:14:32] Speaker 05: Have I misunderstood the premise? [00:14:34] Speaker 01: I think, well, I'm not going to say that you've misunderstood the premise, but let me step back. [00:14:39] Speaker 05: I'm sorry. [00:14:40] Speaker 05: Did the request talk about Sakai and, let's see, Sakai and Hammond and GB 853 or whatever it is? [00:14:51] Speaker 05: No, the request did not. [00:14:52] Speaker 05: OK, so we're dealing with a substantial new question of patentability outside the request, and therefore outside 1.515, no? [00:15:00] Speaker 01: Now, the order was issued based on the request. [00:15:03] Speaker 01: So the reexamination order was based on the other references. [00:15:07] Speaker 05: What language in 1.515 says that when an examiner in ruling on the request can determine a substantial new question of patentability other than those asserted in the request? [00:15:22] Speaker 01: There is no rule that says that, that I know of. [00:15:26] Speaker 01: Here, that's not what happened. [00:15:28] Speaker 01: Here, what's happened is that in the order granted reexamination, the examiner considered the prior art that had been raised by the third party requester. [00:15:37] Speaker 01: And the orders are up here at... I know where they are. [00:15:41] Speaker 05: We have very limited time, so let's focus on attendance. [00:15:43] Speaker 01: It limited itself only to Komatsu, Yoshikawa, and the Makedi Declaration. [00:15:47] Speaker 05: And then there were rejections later on this other art, and you need to have a substantial new question of patentability, which is implied in the rejection. [00:15:54] Speaker 05: The question is, [00:15:56] Speaker 05: If there has to be, as I think there has to be, and tell me if I'm wrong, under the statute, a director's determination of a substantial new question of patentability, the question is, how did the examiner get to do that? [00:16:08] Speaker 05: If there were a regulation that delegated that sua sponte authority, the at any time authority in the second sentence of 303, then that would be fine. [00:16:19] Speaker 05: I don't see it. [00:16:20] Speaker 05: I want to know if there is, in fact, a delegation from the director to the examiner to exercise at his own initiative and at any time authority. [00:16:32] Speaker 01: Well, I think that the way the statute works is that once you issue the order, then 305 provides that you then move into regular examination. [00:16:42] Speaker 05: Let's put that aside. [00:16:46] Speaker 05: I want to know. [00:16:47] Speaker 05: And maybe you just want to answer the question, no. [00:16:50] Speaker 05: There is no regulatory delegation by the director to an examiner to make a determination of a substantial new question of patentability outside the terms of the request that was made by whoever the requester was. [00:17:08] Speaker 01: I guess other than section 3B, which gives the director [00:17:14] Speaker 01: the ability to delegate any of its functions. [00:17:17] Speaker 01: I'm not disputing the director could delegate. [00:17:19] Speaker 01: I'm asking if the director has delegated. [00:17:21] Speaker 01: I do not know of a rule that specifically lays that out. [00:17:28] Speaker 05: So you do depend therefore on the argument that you made in the brief that [00:17:33] Speaker 05: Um, once the examination goes, we're now kind of into the normal, what is it? [00:17:38] Speaker 05: 132, 133. [00:17:40] Speaker 01: Exactly. [00:17:40] Speaker 01: Because 305 provides that once the there's a threshold determination in sections 303 and 304. [00:17:47] Speaker 05: And once why would that argument not have prevailed in, um, Belkin under, under the express language that this court used in Belkin discussing the terms of [00:18:00] Speaker 05: the counterparts of 303 and 304. [00:18:05] Speaker 01: The first issue that was an issue in Belkin was whether or not the board had jurisdiction to consider the S&Q determination, which the court held did not under Section 312C. [00:18:20] Speaker 05: specifically. [00:18:21] Speaker 05: I understand the difference in procedural context and that there was a determinant and that in that case, the director had actually said, no, I don't think X is a, is a SNQ. [00:18:33] Speaker 05: And, um, but we said repeatedly as a statutory matter that there is an affirmative requirement for there to be an SNQ from the director [00:18:47] Speaker 05: on a particular matter in order for the re-exam to rest on that piece of prior art. [00:18:58] Speaker 05: The re-examination order defines the terms of the re-exam. [00:19:05] Speaker 05: So the statutory interpretation was broader than the specific procedural context. [00:19:13] Speaker 01: But what Belkin said, and I quote, Belkin said that the PTO can make any new rejection as long as the rejection also meets the substantial new question of patentability requirements. [00:19:22] Speaker 01: So it obviously had a conception of rejections as going broader. [00:19:29] Speaker 05: If the director finds one. [00:19:32] Speaker 05: Right? [00:19:34] Speaker 01: Well, it said the PTO can make any new rejection. [00:19:38] Speaker 01: And this court, in other cases, such as Hinniker, has in Hinniker, this court clearly. [00:19:43] Speaker 05: What are you reading from, by the way, when you're quoting? [00:19:47] Speaker 01: That's at 1383. [00:19:50] Speaker 05: Where? [00:19:51] Speaker 01: At the first full paragraph in 1383. [00:19:54] Speaker 01: It says, inter-parties re-examination is not totally limited to those issues suggested by the requester that presented a substantial impression. [00:20:00] Speaker 01: Right. [00:20:01] Speaker 05: And then what's the citation after the sentence? [00:20:03] Speaker 05: It does refer to the ex-party re-exam statute. [00:20:07] Speaker 05: not the inter-parties run, the ex-party 303A. [00:20:10] Speaker 05: And it's specifically about the sentence that says, and indeed it's quoted in the parenthetical, on his own initiative and at any time the director may determine whether a substantial new question of patentability is raised. [00:20:22] Speaker 05: So that's what that sentence very specifically says. [00:20:25] Speaker 05: Of course the director can do it. [00:20:29] Speaker 05: That doesn't mean the examiner can do it without regulatory authorization. [00:20:42] Speaker 01: The rules, the re-examination rules clearly contemplate that the examiner, sorry, 550, rule 550, they certainly contemplate that the examiner can consider other prior art. [00:21:03] Speaker 01: In 555 for example, it says that the examiner should [00:21:08] Speaker 01: consider and evaluate all information material to patentability in the re-examination proceeding. [00:21:17] Speaker 01: That's in 555A. [00:21:20] Speaker 01: It also, in 555A, it says that the patent owner has a duty to disclose and that that information should be considered by the examiner. [00:21:29] Speaker 01: I think it's quite clear. [00:21:31] Speaker 05: Do I understand this right? [00:21:33] Speaker 05: I mean, 555 is about both types of [00:21:37] Speaker 05: re-exams, right? [00:21:38] Speaker 05: Interparties and ex-parties? [00:21:39] Speaker 00: Correct. [00:21:40] Speaker 05: So that would be equally true in the Belkin context? [00:21:42] Speaker 00: Correct. [00:21:43] Speaker 05: So how could that mean something contrary to what this court said in Belkin? [00:21:49] Speaker 05: The statute limited the examiner to do. [00:21:53] Speaker 01: I respectfully disagree with what Belkin court was saying. [00:21:58] Speaker 01: What the Belkin court was deciding is when Prior Art has been determined to not raise an SNQ, which it had in that case, in the order [00:22:06] Speaker 01: The examiner had specifically decided that certain prior art did not raise an S&Q. [00:22:12] Speaker 01: And therefore, what the court said in Belkin was that once it's made that determination, it cannot then utilize or consider that prior art in its rejections, which makes sense, because an S&Q determination is a lower threshold. [00:22:26] Speaker 01: It's a substantial likelihood standard. [00:22:28] Speaker 01: And therefore, it wouldn't make sense that the examiner could have written a rejection based on that prior art. [00:22:34] Speaker 01: And that's all that Belkin stands for, and that's all that Belkin is really holding. [00:22:39] Speaker 01: It was about the jurisdictional issue, and secondarily, it was about whether or not there was a final written decision favorable to patentability. [00:22:47] Speaker 01: And for those reasons, it held there was no final decision because the examiner did not consider those references and could not have considered those references. [00:22:57] Speaker 01: And therefore, there had never been a final decision [00:23:01] Speaker 01: with favorable to patentability in Belkin. [00:23:03] Speaker 01: And that's all that that case stands for. [00:23:05] Speaker 01: And that's simply different from this case where the examiner is considering new prior art that was brought in by Pactive. [00:23:13] Speaker 01: And Pactive, it included that prior art in addition to the prior art that had been erased by the requester and combined that to write its first office action. [00:23:24] Speaker 05: Can I ask you a question that goes to the issue of preclusion question? [00:23:28] Speaker 05: Yes. [00:23:30] Speaker 05: I know you [00:23:31] Speaker 05: think that the same answer applies, whether a claim has been amended or not. [00:23:37] Speaker 05: Am I understanding that you think that there is at least a potential distinction so that even if I thought the examiner could not do this for an unamended claim, you would have an argument, maybe you even have made an argument, did in the earlier case. [00:23:56] Speaker 05: that the examiner has the wider latitude for amended claims, which after all are new. [00:24:01] Speaker 05: Nobody could have requested a re-examination of a claim that didn't exist before. [00:24:08] Speaker 01: Right. [00:24:09] Speaker 01: I do think there is possibly a distinction. [00:24:12] Speaker 01: However, I do believe that in the prior appeal at 2071 and 2072 of the record, Pactiff raised both [00:24:22] Speaker 01: made arguments both with respect to the original claims and said, that's in 2171, it says those original claims, which also were based on S and Qs that were not in the original order. [00:24:34] Speaker 01: And then in 2072, it made a case for amended claims and it asked for both of those two rejections to be remanded to the PTO for confirmance. [00:24:47] Speaker 01: And this court, by affirming the board necessarily, [00:24:52] Speaker 01: rejected both arguments, both sets of arguments, because it could not have, at least with respect to the original claims, it would have had to have remanded if this court did not agree that those claims were not improper. [00:25:07] Speaker 01: If it had agreed with Paktiff's argument that those rejections were improper, it would necessarily have had to have remanded those claims to the PTO, and it did not. [00:25:14] Speaker 05: So there were both unamended and amended claims at issue in this case. [00:25:18] Speaker 01: Exactly. [00:25:23] Speaker 01: If there are no additional questions, I reserve the remainder of my time. [00:25:27] Speaker 05: Thank you. [00:25:36] Speaker 03: Your Honor, just to address that last point, they were all amended claims. [00:25:40] Speaker 03: What we had asked for was something rather novel in the remand, which was because the court had, because the PTO we thought had gone beyond the statutory bounds to essentially turn back the clock [00:25:52] Speaker 03: on those amendments and allow the claims as they were in their original form prior to the amendment. [00:25:57] Speaker 03: But they were all amended, notwithstanding the fact that we asked for those original claims to be issued. [00:26:02] Speaker 03: And the court may not have wanted to do that because that would have been, we submit a novel kind of remand argument. [00:26:09] Speaker 03: I do want to address a number of things. [00:26:13] Speaker 03: In particular, this issue about Belkin and rejecting the prior art. [00:26:19] Speaker 03: The Belkin decision goes through the entire statutory analysis and comes up with its conclusion and doesn't address this rejection of the three pieces of prior art until the end. [00:26:28] Speaker 03: And at the very beginning of page 1384 is where it addresses this. [00:26:31] Speaker 03: And at this point, the court has already made its conclusion about the statutory construction. [00:26:36] Speaker 03: And so when it addresses this, it says, quote, secondly, if there had been any doubt in this case, and then it goes on to say the examiner rejected those [00:26:46] Speaker 03: talks about the fact that the examiner rejected those three references. [00:26:50] Speaker 03: So the rejection of the three references was merely confirmatory of the statutory construction. [00:26:57] Speaker 03: In fact, this court said, to resolve the question on appeal, we start with the statute. [00:27:03] Speaker 03: Also, in relation to the idea that the regulations may require the examiner to go out and search ARC and 1.515 and 520 [00:27:12] Speaker 03: Again, let's just take a step back to the statute. [00:27:15] Speaker 03: As this court said in Belkin on page 1384, statutes rank higher than regulations, which rank higher than the NPEP. [00:27:23] Speaker 03: And let's look at the statute. [00:27:25] Speaker 03: And I want to raise one more issue on Judge Toronto, your point about the commissioner can do certain things and then the examiner can do certain things. [00:27:34] Speaker 03: Judge Nice's concurrence in In Re Etter, which addressed the scope of ex parte re-examination, this is on page 15 of our reply brief, she notes, [00:27:42] Speaker 03: Nothing in the statute constrains the commissioner, so at that time it was the commissioner, now the director, of course, from finding more than one substantial new question of patentability. [00:27:51] Speaker 03: However, under the statute, the commissioner, she emphasizes commissioner, is required to make such determination. [00:27:57] Speaker 03: He should not merely allow reexamination to proceed in any direction at the discretion of an examiner. [00:28:04] Speaker 03: Clearly, reexamination was not designed to allow the PTO simply to reconsider and second guess what it has already done. [00:28:12] Speaker 03: That's the, in Ray Etter case, construing ex parte re-examination, which is making exactly the point. [00:28:16] Speaker 03: The director finds the SNQ, confines the examiner. [00:28:19] Speaker 03: If you want a new SNQ, the director finds one, you start the process all over again. [00:28:24] Speaker 05: What is the role, I guess Judge Lynn asked this question earlier, of an IDS in a proceeding that's, under your view, confined to the affirmatively stated [00:28:40] Speaker 05: substantial new questions in the re-exam order. [00:28:43] Speaker 03: So I see I'm out of time. [00:28:45] Speaker 03: The IDS has a number of purposes. [00:28:48] Speaker 03: And if you see what we've submitted in the IDS beyond the ART, we also submitted, for example, the invalidity contentions that were at issue in the prior litigation. [00:28:56] Speaker 03: So even though you can't use the IDS to formulate a new rejection, the examiner can use the IDS to, for example, see how the parties are arguing, combining the [00:29:07] Speaker 03: The examiner can also, under the rules and under the statute, go out and use other art to rebut arguments of patentability. [00:29:13] Speaker 03: So, for example, were I to say, if I had a case, ice does not melt at 32 degrees, the examiner can go out and find other art or statements in an IDS where I may have admitted that ice melts at 32 degrees to rebut that argument. [00:29:27] Speaker 03: What it can't do without an SNQ under Section 303 is use that art to formulate a new rejection. [00:29:34] Speaker 03: But the examiner could, and the director, as I stand here today, can issue a new SNQ based on any of the art it wants, including what was in the IDS. [00:29:44] Speaker 05: Do you have a view about whether the director could do that retroactively for this case? [00:29:50] Speaker 03: I don't believe the director can do it retroactively because, again... Or retroactively delegate authority to the examiner? [00:29:59] Speaker 03: That still doesn't solve the procedural [00:30:01] Speaker 03: the procedural safeguards. [00:30:02] Speaker 04: Where, for example, in the 195... Do you think the director can delegate this authority at all? [00:30:08] Speaker 03: Under Section 3B of the statute, the director can delegate certain authority, whether the director has or not. [00:30:15] Speaker 04: Right. [00:30:16] Speaker 04: But it seems to me, based upon what you're arguing about procedural rights, that you think the director couldn't delegate this authority to the examiner. [00:30:24] Speaker 04: Is that right? [00:30:25] Speaker 04: I believe the director could, and I believe there are... Well, then if he could, then what [00:30:30] Speaker 04: then wouldn't that run afoul of your argument that you get certain rights and at times to respond and things like that? [00:30:35] Speaker 03: No, because the substantial due question of patentability when found by the director is still a creation of the statute which confines the examination and which determines what happens following. [00:30:46] Speaker 04: So if, for example... So if the director delegated to the examiner and said during the course of the re-examination, you have the authority to declare a new substantial new question based upon prior art submitted, [00:30:59] Speaker 03: That's okay with you? [00:31:01] Speaker 03: No, not in the course of the re-examination. [00:31:06] Speaker 03: You can do that and restart a new one. [00:31:08] Speaker 04: So you don't think the director can delegate the authority that we're talking about here, about what the examiner did here? [00:31:15] Speaker 03: That is correct, Your Honor. [00:31:16] Speaker 03: I was saying the director can delegate to an examiner to create the SNQ, but not to do it midstream. [00:31:22] Speaker 05: So the examiner could declare basically an amended re-exam order. [00:31:28] Speaker 05: Or a new one. [00:31:29] Speaker 05: As long as the procedural rights are given in terms of two months. [00:31:35] Speaker 03: Correct. [00:31:35] Speaker 03: So for example, the GBA 53 reference was not raised until a final office action in the 195 patent. [00:31:44] Speaker 03: You have no right, no absolute right to respond to a final office action. [00:31:47] Speaker 03: You necessarily are confined in how you respond to a final office action. [00:31:52] Speaker 03: The examiner might not enter it. [00:31:53] Speaker 03: And in a reexamination, unlike a reissue where you have full unbounded patentability, you could file an RCE or a continuation if that amendment's not entered. [00:32:02] Speaker 03: And here, on page 647 of the record in the advisory action post the final office action, the examiner actually took us to task for not presenting additional evidence to counter the arguments. [00:32:13] Speaker 03: Well, that's only because the procedural posture had hampered us. [00:32:20] Speaker 03: That's the specific prejudice, Your Honor. [00:32:22] Speaker 03: that you were talking about, not having a full opportunity to respond to the SNQ, and then the examiner calling us on it and saying, you didn't prevent sufficient evidence for me to really reconsider my argument. [00:32:33] Speaker 03: Well, after final, if we want to get it entered, we have to be really careful about not overstepping our bounds, or it might not get entered at all, because after all, you're done. [00:32:41] Speaker 03: Thank you, Your Honor. [00:32:44] Speaker 03: Thank you. [00:32:45] Speaker 03: This case is submitted.