[00:00:04] Speaker 06: Okay, the first case, the first argued case this morning of Chan against Yang, is counsel present? [00:00:11] Speaker 06: Please come forward. [00:00:28] Speaker 06: Okay, this is case number 16-12-14. [00:00:30] Speaker 06: Mr. Bauer, when you're ready. [00:00:46] Speaker 03: Your Honors, may it please the court? [00:00:49] Speaker 03: Mr. Bauer, appellees ask us to affirm this case based on interference estoppel. [00:00:56] Speaker 03: I don't see one mention of that in your blue brief. [00:00:59] Speaker 03: Why shouldn't we affirm just based on that? [00:01:03] Speaker 04: I'm sorry, Your Honor, pages one to nine of the corrupted brief believe we addressed the interference estoppel. [00:01:19] Speaker 03: Maybe I missed it. [00:01:25] Speaker 04: OK. [00:01:25] Speaker 04: But following up on that point, Your Honor, while we think that the application of interference is not correct, the more important feature and characteristics of this case is that it's undisputed that the claims [00:01:47] Speaker 04: to the party yang or directed towards subject matter that is not patentable under Section 101. [00:01:55] Speaker 04: That is not merely chance contention. [00:01:58] Speaker 04: But it was, in fact, the case that the examiner in the Patent Office rejected those claims as being unpatentable under Section 101. [00:02:08] Speaker 04: And the interference was declared nonetheless. [00:02:12] Speaker 04: So we have continued to raise [00:02:15] Speaker 04: our objection that the claims are not directed to patentable subject matter. [00:02:20] Speaker 04: In our brief, that's not disputed by the appellee Yang. [00:02:26] Speaker 04: And also, importantly, the panel at the PTAB also did not address the patentability of the claims. [00:02:37] Speaker 04: They regarded the patentability of the claims as being irrelevant to the order to show costs. [00:02:42] Speaker 04: It may be irrelevant to the order to show cause, which was based on interference with Staple, but it's not irrelevant to the fact that there is an interference proceeding which has been declared. [00:02:54] Speaker 04: And when we raised these points, the decision and the opinion of the board was that it was irrelevant. [00:03:03] Speaker 03: We cited in our brief... I'm still confused here. [00:03:06] Speaker 03: Where's the word of Staple in here? [00:03:10] Speaker 03: I'm sorry. [00:03:12] Speaker 03: You're directing me to pages one through nine. [00:03:28] Speaker 03: Give me a specific page that will help me. [00:04:08] Speaker 04: Your Honor, I'm not saying that specific term either in the pages as I see it. [00:04:13] Speaker 04: I would refer you then to our response to the order to show cause in which we did address the interference estoppel in that response. [00:04:21] Speaker 06: We'll continue with your argument. [00:04:22] Speaker 06: If we need supplemental briefing, we will proceed with it. [00:04:26] Speaker 04: Thank you, Your Honor. [00:04:28] Speaker 04: So we believe that the patentability of the claims is a crucial element in interference proceeding. [00:04:36] Speaker 04: And specifically, the rule [00:04:38] Speaker 04: before the board rule 102 says, and I quote, before a contested case is initiated for each applicant and patent, A, examination or re-examination must be completed, and B, one, there must be at least one claim that is patentable but for a judgment in the contested case. [00:05:00] Speaker 04: So we have here an instance in which it is undisputed that the claims are not patentable and yet the interference proceeding [00:05:08] Speaker 04: has gone forward. [00:05:10] Speaker 04: There is also confusion about what is the actual language of the claims. [00:05:16] Speaker 04: When the examiner rejected the claims under 101, it was suggested that the 101 rejection could be overcome by adding a white rap hide limitation. [00:05:29] Speaker 04: Now, evidently, that suggested amendment was never carried out. [00:05:35] Speaker 04: So we have some confusion about what is the actual claims. [00:05:39] Speaker 06: That wasn't carried out? [00:05:40] Speaker 06: That wasn't part of the interference? [00:05:43] Speaker 04: No, Your Honor. [00:05:44] Speaker 04: In Yang's submission of their claims, the appendix pages 226 to 230, they included a footnote, appendix page 228, in which they noted that the white rye pie limitation was not included in the claims because although it had been mentioned as necessary [00:06:05] Speaker 04: to make the claims patentable subject matter under 101, it had not been entered prior to the declaration of the interference. [00:06:12] Speaker 06: So it wasn't as your reading is that it was not a condition accepted by the office for proceeding with the interference? [00:06:20] Speaker 04: Well, we've had to proceed under both alternatives just to be safe. [00:06:24] Speaker 04: We've argued both. [00:06:26] Speaker 03: Your argument on non-interference is based solely on an analysis of the Yang application, including the white rapide [00:06:34] Speaker 03: amended claim language. [00:06:36] Speaker 04: Yes. [00:06:37] Speaker 03: So you're arguing both that the interference proceeding must take the account of Amendment 12 and at the same time it can't. [00:06:46] Speaker 04: Well, we've responded to those arguments as to both. [00:06:50] Speaker 04: If the rat pie limitation is included, we think there is patentable distinctness. [00:06:56] Speaker 04: If it's not included, we believe that the claims then remain unpatentable under Section 101 as being primarily directed towards a natural compound. [00:07:03] Speaker 04: And therefore, the declaration should not, the interference should not have been declared. [00:07:07] Speaker 05: Did you make that argument below that the unamended claims were unpatentable under 101? [00:07:14] Speaker 05: Because I didn't see that argument ever made below in any form. [00:07:18] Speaker 04: Yes, it was. [00:07:20] Speaker 04: The argument was made in the response to the order to show cause. [00:07:25] Speaker 05: In the response to the order to show cause, you said the amended claims were unpatentable. [00:07:29] Speaker 05: What I don't see is any argument that the unamended claims are unpatible. [00:07:34] Speaker 04: Yes, Your Honor. [00:07:35] Speaker 04: That's correct. [00:07:36] Speaker 04: And we've had to, because the claims that Yang has submitted as before was at issue in the interference proceeding, is without the white rat pie limitation, I've had to address that representation by the appellee. [00:07:54] Speaker 04: And if the white rat pie limitation is included, [00:07:57] Speaker 04: then we think there's patentable distinctness between the claims. [00:08:01] Speaker 04: If it's not included, we're not relying upon patentable distinctness, but on the fact that the claims would remain on patentable subject matter. [00:08:10] Speaker 03: Let me ask you a housekeeping question. [00:08:14] Speaker 03: Sure. [00:08:14] Speaker 03: Let me hit page one. [00:08:16] Speaker 03: I wrote this note. [00:08:17] Speaker 03: You highlighted in yellow the word interference. [00:08:21] Speaker 03: Why? [00:08:25] Speaker 04: I'm sorry, Your Honor. [00:08:26] Speaker 04: I can't answer the question. [00:08:27] Speaker 04: I did not submit the brief. [00:08:28] Speaker 04: And my copy of the brief does not include a yellow highlight. [00:08:32] Speaker 03: OK. [00:08:32] Speaker 03: Maybe somebody snuck in and did my briefs. [00:08:34] Speaker 04: I don't know. [00:08:35] Speaker 03: Because there are various places where there's just random yellow highlighting. [00:08:39] Speaker 03: I don't know. [00:08:40] Speaker 03: OK. [00:08:42] Speaker 04: But looking at the posture of the case, I think it's important to understand that we are engaging in a proceeding [00:08:52] Speaker 04: where the claim subject matter arguably is not patentable at all. [00:08:57] Speaker 04: And of course, we're dealing with 101 issues in many recent years. [00:09:01] Speaker 04: And when these issues are raised, they represent a full stop to the proceeding. [00:09:06] Speaker 04: If you have a 101 issue and the claims at issue turn out to be unpatentable subject matter, [00:09:11] Speaker 04: You don't continue on to a 102 analysis or a 103 analysis on a court act. [00:09:16] Speaker 06: So the distinction that you're drawing is the distinction between the natural product and the oxalate salt, which may or may not have been included in some sort of understanding that that's what was being dealt with? [00:09:30] Speaker 04: Yes, we are following that distinction which the examiner made during the examination of the application of Yang's application. [00:09:39] Speaker 06: OK. [00:09:40] Speaker 04: So we're following on that. [00:09:44] Speaker 04: Now, the rule that I quoted says that examination must be completed. [00:09:49] Speaker 04: I mean, this is very odd. [00:09:50] Speaker 04: I can't recall any case that's come to the federal circuit from an interference proceeding where we're not even sure what the limitations of the claims are. [00:09:58] Speaker 04: So we've had to try to address both alternatives. [00:10:01] Speaker 06: Well, let's assume that the examiner thought that that limitation to the oxlet had been added. [00:10:08] Speaker 06: And so that the white graffiti was included. [00:10:11] Speaker 04: And then that's what we assumed when, in the response to the order to show cause, we argued why that white rap-hide limitation served to distinguish those claims from our claims. [00:10:23] Speaker 04: Did I answer your question, Your Honor? [00:10:25] Speaker 04: Well, so far. [00:10:30] Speaker 04: OK. [00:10:30] Speaker 04: Uh, examination seems that the examination was not complete in this case. [00:10:35] Speaker 04: For some reason, the interference was declared before the examination was completed. [00:10:39] Speaker 04: And also it's undisputed that the claims are not directed towards patentable subject matter. [00:10:45] Speaker 04: Board rule 103 says, and I quote, the board acquires... You're saying it's undisputed? [00:10:50] Speaker 06: If it's undisputed, why are we here? [00:10:52] Speaker 04: That's exactly our contention, Your Honor. [00:10:55] Speaker 04: If it's undisputed that the claims... Because of the estoppel? [00:10:59] Speaker 06: I didn't see that it was undisputed. [00:11:01] Speaker 04: Well, certainly in Ablee's brief, they did not dispute that the patentability of the claims under 101. [00:11:09] Speaker 04: They said, irregardless, as the board panel did, irregardless of whether they're patentable subject matter, because of interference estoppel, we must still find judgment against Chan. [00:11:21] Speaker 04: And we think that's an error because patentability of the claims [00:11:25] Speaker 04: is a fundamental jurisdictional issue. [00:11:28] Speaker 04: Board rule 103 says the board acquires jurisdiction over any involved file in interference when the board initiates a contested case. [00:11:38] Speaker 04: And rule 102 says, in order to initiate a case, you have to have completed examination, and the claims have to be allowable but for the other party. [00:11:49] Speaker 04: And the claims must be patentable. [00:11:51] Speaker 04: And so that's not the case here. [00:11:54] Speaker 04: So our contention is that there should not have been an interference proceeding declared. [00:11:59] Speaker 04: And the panel at the board simply said it was irrelevant. [00:12:05] Speaker 04: And that's particularly troubling because we don't have anything more to respond to why that is believed to be irrelevant. [00:12:13] Speaker 04: We think it is relevant. [00:12:15] Speaker 04: In fact, we think it is a necessary prerequisite. [00:12:19] Speaker 04: Appellees and the board panel didn't point to any decision [00:12:23] Speaker 04: in which an interference proceeding has allowed to be gone to a conclusion where the claims were admittedly unpatentable as to that party. [00:12:33] Speaker 04: On the interference estoppel issue, I think the analysis confuses that. [00:12:39] Speaker 04: Interference estoppel is one form of race duercata, which says that the results in one proceeding cannot be inconsistent with the results of a prior proceeding involving the same parties in the same subject matter. [00:12:51] Speaker 04: Here, we think that there's a separate analysis regarding the interference proceeding, whether it should be declared. [00:12:58] Speaker 04: You do not declare an interference proceeding, and you do not initiate a court action so that you can then, later at the end of it, apply the estoppel. [00:13:07] Speaker 04: There has to be proper basis for having the proceeding in the first place. [00:13:11] Speaker 06: Is there any dispute, assuming that these, I was going to say, technical objections about whatever they are? [00:13:21] Speaker 06: don't apply, is there any dispute as to priority? [00:13:26] Speaker 04: I believe as to priority, we are bound by interference. [00:13:30] Speaker 04: Because in the first interference, when it came to the priority phase, we defaulted as to the two patents in that case, and they were lost. [00:13:39] Speaker 04: And I think estoppel does bar us from arguing priority. [00:13:43] Speaker 04: I don't think it bars us from arguing lack of patentable subject matter. [00:13:48] Speaker 06: Okay, let's hear from the other side, and we'll save you rebuttal time. [00:13:51] Speaker 04: Thank you, Your Honor. [00:14:01] Speaker 06: Ms. [00:14:01] Speaker 06: Gross. [00:14:02] Speaker 00: Good morning, Your Honors. [00:14:03] Speaker 00: Thank you for your time this morning. [00:14:05] Speaker 00: The first issue of whether the Board correctly declared interference between the re-declared count claims of the 197 patent and the claims of the 637 patent application, there seems to be a main question to ask and answer. [00:14:18] Speaker 00: Is there substantial evidence to support the board's finding that there was insufficient evidence submitted by Chan that the claims of the 637 application are not anticipated or rendered obvious over the re-declared count claims? [00:14:33] Speaker 00: And the answer to this question is yes, there was substantial evidence to support the board's conclusion. [00:14:39] Speaker 00: The declaration of the 025 interference in itself created a rebuttable presumption that the 637 application claims [00:14:47] Speaker 00: were anticipated or obvious over the 197 patent claims or vice versa. [00:14:52] Speaker 00: And the board correctly found that there was insufficient evidence submitted by Chan to rebut that presumption. [00:14:59] Speaker 00: And the record on appeal actually reflects the lack of any evidence whatsoever submitted by Chan in this regard. [00:15:06] Speaker 00: Chan's brief and argument here makes this question appear slightly more complicated with regard to the unamended claims versus the amended claims. [00:15:13] Speaker 00: But we'll submit that the board correctly [00:15:16] Speaker 00: looked at the amended claims because those were the claims that the examiner indicated were in condition for allowance. [00:15:22] Speaker 00: Those were the claims that the examiner indicated included the white RAFID limitation. [00:15:29] Speaker 00: And in the interview summary that was available to the board prior to the declaration of interference, that limitation was referred to as critical to the condition of allowance. [00:15:41] Speaker 00: So it's clear from the record that the board used the amended claims and not the unamended claims. [00:15:46] Speaker 00: In any event, even if we are considering the unamended claims of the 637 patent application, Chan failed to submit any evidence whatsoever and also didn't submit any argument regarding as to why those claims, the 637 patent application unamended claims were not or were [00:16:08] Speaker 00: anticipated or obvious over the 197 patent claims. [00:16:13] Speaker 00: And there was argument in the response to order to show cause submitted by Chan to rebut the presumption that the declaration of interference created with regard to the amended claims, but there was no evidence whatsoever to support that argument. [00:16:28] Speaker 00: The board had no testimony from a person of ordinary skill in the art to show that the claims of the 197 patent [00:16:36] Speaker 00: were different from the claims of the 637 patent application. [00:16:41] Speaker 00: So when the board issued its order in July of 2015, the board appropriately noted that there was no evidence to support attorney argument on obviousness. [00:16:51] Speaker 00: And without evidence, it had no choice but to find that there was insufficient evidence to rebut the presumption created by the Declaration of Interference. [00:17:00] Speaker 06: So is your understanding that the prosecution is complete even if the [00:17:06] Speaker 06: decision on priorities sustained? [00:17:10] Speaker 00: Yes, Your Honor. [00:17:10] Speaker 00: In terms of completeness with regard to having allowable subject matter, the examiner indicated that there was allowable subject matter in the interview summary. [00:17:21] Speaker 00: And then once the interference was declared, the next step is to basically allow the claims, or it goes back to the examiner at some point after the 025 interference is complete. [00:17:35] Speaker 00: And then at that time, the examiner could consider Chan's arguments on 101 again and reopen prosecution. [00:17:44] Speaker 06: That's really what I was thinking about, whether the 101 issue, which perhaps has been developed more thoroughly than when it was initially before the examiner, particularly because of the white graffiti. [00:17:59] Speaker 00: Well, Your Honor, the record of this declaration and the previous declaration is available to the examiner. [00:18:05] Speaker 00: And so once the 025 interference is complete, that whole record goes back to the examiner. [00:18:12] Speaker 00: And the examiner can go back through Chan's arguments and reconsider 101, even after it already considered 101 and suggested the limitation that is now in claim 12 of the 637 application. [00:18:28] Speaker 06: OK. [00:18:30] Speaker 00: It's telling in Chan's appeal brief that there's only citation to the 197 patent claims to support the argument that the crystallized version of the compound, as in the amended claims of the 637 patent application, are not anticipated by the non-crystallized version of the compound, as in the 197 patent claims. [00:18:51] Speaker 00: But the patent claims in themselves are not substantial evidence that the 637 application claims are not anticipated by the claims of the 197 patent. [00:19:01] Speaker 00: And there's no citation at all in the record in Chan's brief to support its argument on appeal that the crystallized version, the amended claims of the 637 application, is not obvious over the non-crystallized version of the compound, as in the 197 patent. [00:19:17] Speaker 06: So there is such... [00:19:19] Speaker 06: Chemical composition identical, or are you now talking about the salt for the crystallized version? [00:19:24] Speaker 00: Your Honor, I'm talking about the addition of the white rafid limitation into the claims as the crystallized version of it versus the non-crystallized version. [00:19:33] Speaker 06: So it's really a different compound. [00:19:34] Speaker 06: It's the oxalate, right? [00:19:36] Speaker 00: In terms of a different compound, I think the board concluded that there was not necessarily a non-obvious [00:19:47] Speaker 00: difference between those two compounds. [00:19:50] Speaker 06: Which would be true of any sort of a complex organic molecule, I suppose, but perhaps of significance as far as 101 is concerned. [00:20:03] Speaker 00: Your Honor, I think that the examiner has a chance to re-explore the patentability of the claims once it's passed back to the examining core after the 025 interference, but at the time the examiner indicated [00:20:16] Speaker 00: the allowable subject matter, the examiner decided that this was sufficient to get over any potential rejection under 101. [00:20:25] Speaker 06: Does the crystallized version occur naturally? [00:20:30] Speaker 00: Your Honor, I'm not sure if these issues are fully developed at this point in the issues that we're arguing on appeal. [00:20:38] Speaker 00: Yes. [00:20:38] Speaker 06: Well, I'm not asking you to go outside the record. [00:20:41] Speaker 06: It wasn't clear to me. [00:20:43] Speaker 06: I'm sorry. [00:20:44] Speaker 06: It wasn't clear in the record. [00:20:45] Speaker 06: It wasn't clear to me whether the crystallized version of the oxalate occurred naturally in the plant, which would have solved the 101 problem, I suppose. [00:20:56] Speaker 00: Your honor, I'm not prepared to take a position. [00:20:58] Speaker 06: No, I didn't want to move outside of the record. [00:21:01] Speaker 06: If that wasn't part of the debate, we'll leave it unresolved. [00:21:06] Speaker 00: Thank you, your honor. [00:21:08] Speaker 00: So on the first issue as to whether the board correctly declared interference, there was no error in the board's conclusion that Chan submitted no evidence to rebut the presumption created by the declaration of interference. [00:21:21] Speaker 00: And as such, the court should not disturb the board's re-declaration of interference in the 025 interference. [00:21:28] Speaker 00: And then on the second issue, whether the board correctly issued judgment against the re-declared count claims and then canceled the re-declared count claims without considering the patentability [00:21:38] Speaker 00: of the claims of the 637 application, the board did not err by not considering Chan's patentability arguments. [00:21:46] Speaker 00: It is conspicuously absent from Chan's appeal brief that there's no discussion whatsoever of the preclusive effects of the doctrine of interference estoppel, but the application of this doctrine is central to this issue. [00:22:00] Speaker 00: When correctly applied, interference estoppel removes the motions and the other issues [00:22:05] Speaker 00: that can be raised during the priority phase of an interference. [00:22:10] Speaker 00: Whereas here, if a party did not timely raise an issue such as patentability under 101 that it could have raised during the previous interference, it may not later raise that issue in a later proceeding before the office. [00:22:28] Speaker 00: And Chan cites in its brief Perkins against Kwon in support of its argument that the board should have resolved the patentability [00:22:35] Speaker 00: in the 025 interference. [00:22:38] Speaker 00: However, the facts of this case are distinguishable from Perkins v. Kwan for the very reason that... Chan can still raise his 101 arguments in the form of a third-party submission. [00:22:51] Speaker 00: Your Honor, Chan actually has multiple routes, and in fact, a third-party submission once prosecution is reopened is certainly still open. [00:22:59] Speaker 00: In addition to that, the AIA has proceedings in effect post-grant reviews [00:23:04] Speaker 00: where Chan or any other third party, so the public interest is still served and the door is not closed on challenging the patentability of these claims. [00:23:13] Speaker 00: However, based on interference estoppel in this case, the door is closed for Chan because Chan had a chance in the 982 interference but didn't timely raise the issue of patentability in that interference. [00:23:28] Speaker 00: And the board did not issue the order to show cause erroneously and Chan doesn't argue otherwise and it's brief. [00:23:35] Speaker 00: This second- Post-AIA, we don't see many interference cases anymore. [00:23:41] Speaker 05: Is it your view that this is sort of one of the last or among a group of the last of such cases out there? [00:23:50] Speaker 00: Your Honor, we were just reviewing what cases were before the board at this point. [00:23:56] Speaker 00: And I understand that there are some larger interferences still percolating. [00:24:00] Speaker 00: But yes, it is clear that this is not a practice that's going to continue for much longer. [00:24:09] Speaker 00: And then it obviously goes into the derivation proceedings, which is somewhat different than an interference proceeding. [00:24:19] Speaker 00: So the second interference that was declared by the board, for lack of a better term, was really to clean up what the Patent Office probably should have handled in the 982 interference, since the same subject matter and the same parties were involved. [00:24:34] Speaker 00: So priority was never an issue. [00:24:36] Speaker 00: And with that priority never being an issue, along with that, neither were the motions or the issues that should have been raised in the 982 interference, because those claims and those issues were litigated or could have been litigated [00:24:49] Speaker 00: in the 982 interference. [00:24:52] Speaker 00: Chan also makes the argument in its brief that the patentability question had been fully raised and is capable of being fully presented. [00:25:00] Speaker 00: Chan is partially correct on one of these points. [00:25:03] Speaker 00: The issue of patentability was raised, but it was raised in the 982 interference and not in a timely fashion. [00:25:11] Speaker 00: The board denied Chan the ability to file its motion under 101 [00:25:16] Speaker 00: because it waited almost a year and a half after the relevant decision issued to request authorization to file that motion. [00:25:24] Speaker 00: The board did not abuse its discretion by denying Chan the ability to file that motion. [00:25:29] Speaker 00: Chan didn't file it with its proposed motion list in January of 2014. [00:25:33] Speaker 00: In fact, it waited until there was only a week left in the motions phase to file that request for authorization. [00:25:42] Speaker 00: And then Chan didn't even challenge the denial [00:25:45] Speaker 00: of its authorization to file the motion by the board and instead conceded priority and brought an end to the 982 interference. [00:25:52] Speaker 00: The board did not abuse its discretion in doing what it did. [00:25:56] Speaker 00: The doctrine of interference, STOPL, exists to deal with this exact situation. [00:26:01] Speaker 00: Since Chan as the losing party in the prior interference failed to timely raise the patentability issue during the 982 interference, it cannot now raise the issue in the 025 interference. [00:26:13] Speaker 00: And just to do a little bit of cleanup, the doctrine of interference estoppel was correctly applied by the board. [00:26:19] Speaker 00: The 025 interference involved the same subject matter and the same parties. [00:26:24] Speaker 00: When the 025 interference was properly declared, the board considered whether Chan was subject to estoppel. [00:26:30] Speaker 03: Well, you used the words early on, conspicuously absent. [00:26:35] Speaker 03: I couldn't find that argument made anywhere, is it? [00:26:38] Speaker 00: I don't see it as well. [00:26:39] Speaker 00: When Council represented that it was in pages 1 through 9, I quickly glanced through it again thinking that we may have missed something. [00:26:45] Speaker 00: I do not see the words interference estoppel anywhere in the brief. [00:26:49] Speaker 00: And so there is no argument either with regard to the order to show cause that the Board issued with the application of interference estoppel by the Board. [00:27:00] Speaker 00: In fact, Chan completely ignores that argument, but it was correctly applied by the Board. [00:27:07] Speaker 06: Well, but maybe it really is not before us. [00:27:10] Speaker 06: Your friend says he's not contesting priority. [00:27:14] Speaker 06: He's pursuing these other issues. [00:27:17] Speaker 06: And the estoppel would apply to priority. [00:27:19] Speaker 00: Oh, Your Honor, I would argue that the estoppel applies to the claim of priority and also the other issues that would have been litigated or could have been litigated by Chan in the previous interference that interfered. [00:27:33] Speaker 06: He's arguing the other issues. [00:27:35] Speaker 06: He's just not arguing priority. [00:27:38] Speaker 00: Your Honor, but with interference estoppel, if correctly applied, those issues that could have been raised and were not raised in a timely fashion by Chan in the previous interference should not be raised now in the second interference. [00:27:51] Speaker 00: It would give Chan a second bite at the apple to allow Chan now to raise this issue when it's not the time to re-litigate this issue in the second interference. [00:28:06] Speaker 02: You've just echoed the argument Apple made yesterday. [00:28:08] Speaker 02: It was funnier when they did it. [00:28:17] Speaker 00: Your Honor's chant failed to meet the burden that it had on the order to show cause. [00:28:25] Speaker 00: And it submitted no argument or evidence on patentable distinction of the re-declared count claims. [00:28:30] Speaker 00: So there was no error whatsoever in the board's conclusion that Chan didn't submit evidence on patentable distinctness, and thus was a stopped from continuing with the 025 interference. [00:28:41] Speaker 00: And in addition to not continuing with the 025 interference and the priority phase, it's also now a stopped from relitigating or attempting to relitigate the 101 issue. [00:28:51] Speaker 06: I don't know if it's that maybe, after all, [00:28:54] Speaker 06: The first interference, you don't want to assert that your own claim is invalid under 101 or anything else, and so you argue priority. [00:29:05] Speaker 06: Then if you lose on priority, perhaps your only recourse is to challenge the entire subject matter of the interference. [00:29:16] Speaker 06: So perhaps we have a different circumstance here that would explain [00:29:22] Speaker 06: and perhaps not negate the emphasis that's now presented. [00:29:30] Speaker 00: Your Honor, I would argue there's no injustice to Chan here. [00:29:33] Speaker 00: There are other opportunities as we discussed this morning with regard to when Chan can and still can challenge the patentability of the claims. [00:29:44] Speaker 00: This is not the time and the place. [00:29:47] Speaker 06: Okay, thank you. [00:29:48] Speaker 06: Thank you, Your Honor. [00:29:50] Speaker 06: Okay, Mr. Ballard. [00:29:56] Speaker 04: Well, Your Honor made reference to supplemental briefing. [00:30:00] Speaker 06: Well, I don't know if we... I think that we've pursued the issue adequately. [00:30:07] Speaker 04: Okay. [00:30:07] Speaker 04: I was going to suggest, but I think that... Council referred to cleaning up the record and the inequity as a result of the estoppel. [00:30:16] Speaker 04: The 197 patent which is attacked in the second interference, those claims were in fact patented at the time of the first interference. [00:30:24] Speaker 04: That distinguishes this case from Biogen [00:30:26] Speaker 04: and Woods v. Sujia. [00:30:29] Speaker 04: From the point of view of Chan, Chan made a decision that we would abandon those two claims that we thought were suspect because they were directed towards natural compounds, but our 197 patent was not. [00:30:42] Speaker 04: And the result of the first interference was that those two patents would be invalid, and we would keep the 197 patent. [00:30:50] Speaker 04: So there's no estoppel because there is no [00:30:54] Speaker 04: issue now that wasn't already available in the first interference. [00:30:59] Speaker 04: Either Yang, through a motion, or the board could have invalidated these claims in the first interference. [00:31:06] Speaker 04: So if you talk about estoppel, I don't think it applies, because certainly in the case of Biogen, the parties filed and obtained a claim after the first interference, which had to be addressed in the second interference. [00:31:19] Speaker 04: There is no reason why these claims for the 197 patent [00:31:23] Speaker 04: weren't addressed in the first interference. [00:31:25] Speaker 04: So that's why estoppel is not appropriate for these claims. [00:31:29] Speaker 05: Did you make any of these arguments in your brief or cite Biogen at all? [00:31:33] Speaker 04: Yeah. [00:31:33] Speaker 04: Excuse me? [00:31:34] Speaker 05: Did you make any of these arguments in your brief or cite Biogen anywhere in any of your briefing to this court? [00:31:41] Speaker 04: No, Your Honor. [00:31:43] Speaker 04: We did not. [00:31:44] Speaker 04: I did not. [00:31:44] Speaker 04: We raised this notice of 197. [00:31:48] Speaker 04: And I am raising that now. [00:31:51] Speaker 04: But I think it needs to be heard by the court, as does ad nobility issues. [00:31:55] Speaker 05: So why would we hear it when you're raising it not only for the very first time in rebuttal argument? [00:32:01] Speaker 05: The PTO has no opportunity to respond. [00:32:03] Speaker 05: You didn't raise it in your briefs. [00:32:04] Speaker 05: They couldn't respond to it in briefing. [00:32:06] Speaker 05: You're not even raising it in your opening argument. [00:32:08] Speaker 05: You're raising it in your rebuttal argument. [00:32:10] Speaker 05: She doesn't even... I'm sorry, not the PTO, but opposing counsel doesn't even get to stand up and respond to it. [00:32:16] Speaker 04: Well, yes, Your Honor. [00:32:19] Speaker 04: The issue here is that the decision of the patent board was that patentability was irrelevant. [00:32:27] Speaker 03: No, the issue is whether you waived the whole thing. [00:32:30] Speaker 03: That's the issue. [00:32:32] Speaker 04: Well, I would submit to the court that perhaps the next wave of 101 cases is going to be, for example, licensee estoppel, where someone has taken a license to a patent which is later found to be invalid under 101. [00:32:45] Speaker 04: Are they going to be estoppel to continue to pay royalties? [00:32:49] Speaker 04: Even though there is no patent under 101, that seems to me to be inequitable. [00:32:54] Speaker 05: What does that have to do with this case? [00:32:57] Speaker 04: Well, because I think the estoppel relates, Your Honor, to the priority claims and the other claims. [00:33:04] Speaker 04: I think patentability under 101 is a full stop. [00:33:07] Speaker 03: The only connection between the question I asked you about waiver and your answer was you used the word wave, as in there's going to be a wave of cases. [00:33:18] Speaker 03: That's not enough. [00:33:23] Speaker 04: I think that the estoppel does not apply so far to go to the jurisdictional prerequisites. [00:33:30] Speaker 03: Ignore the word estoppel. [00:33:31] Speaker 03: Start with the word waiver. [00:33:34] Speaker 03: Haven't you waived this? [00:33:38] Speaker 04: No, I don't think we have waived the patentability argument. [00:33:42] Speaker 04: And I don't think we are precluded from arguing that the [00:33:47] Speaker 04: lack of patentability of the claims means that the proceedings should not continue. [00:33:53] Speaker 04: Whenever that's discovered. [00:33:55] Speaker 06: Accepting that position, we still have the argument that the position, that what the board decided was in fact, as a matter of fact, supported by substantial evidence. [00:34:08] Speaker 06: And that's a heavy hurdle to overcome, is it not? [00:34:15] Speaker 04: I think [00:34:17] Speaker 04: No, I think the board's decision in that it did not address the patentability, it said it was irrelevant. [00:34:23] Speaker 04: I think this court should at the least vacate and remain, because they did not explain at all in view of board rules 102 and 103 why patentability of the claims in an interference proceeding is not relevant. [00:34:36] Speaker 04: I don't think there's been any other case before this court in which an interference proceeding to a conclusion as to claims which were not patentable under 101. [00:34:45] Speaker 04: I think it's a new issue. [00:34:47] Speaker 04: and how it fits within the estoppel doctrine is difficult. [00:34:53] Speaker 04: But I think it does not merit being swept up with estoppel of priority and other types of waivers. [00:35:00] Speaker 06: As I saw it, it was because having decided priority, that as far as the board was concerned, that was what the role of the interference was about. [00:35:11] Speaker 06: I know that it's supposed to review patentability, but here both sides [00:35:17] Speaker 06: had already been held to have patentable subject matter, and the board decided in the first case, priority. [00:35:28] Speaker 06: And perhaps that's an oversimplification on their part as well. [00:35:35] Speaker 06: But as far as the dispute between the parties, doesn't that resolve it? [00:35:42] Speaker 04: My contention is as to the 101 issue, it does not. [00:35:46] Speaker 04: And as to the 197 patent, it was in the first interference. [00:35:52] Speaker 04: So that was decided in the first interference. [00:35:55] Speaker 06: OK, we'll try and figure it out. [00:35:57] Speaker 06: Any more questions? [00:35:59] Speaker 06: No, I don't want to. [00:36:00] Speaker 06: OK, thank you. [00:36:01] Speaker 06: Thank you both. [00:36:02] Speaker 06: The case is taken under submission.