[00:00:04] Speaker 01: Thank you counsel welcome aboard [00:00:39] Speaker 01: Mr. Collins. [00:00:40] Speaker 03: Yes, sir. [00:00:47] Speaker 01: May proceed. [00:00:48] Speaker 03: Thank you, Your Honor. [00:00:49] Speaker 03: I'm here on behalf of the appellant, Speck. [00:00:52] Speaker 03: So what we have here is a situation where in the prior interference, Speck did not get a chance to pursue its priority case on a count that included a contrast agent embodiment. [00:01:05] Speaker 03: In the second interference, what we're really dealing with is predominantly three, what we believe are three errors by the board, which are all interrelated. [00:01:12] Speaker 03: I can discuss them individually. [00:01:13] Speaker 00: Can you remind me why it was that you ultimately had to go with claim 100 and could not have the contrast agent in the claim? [00:01:22] Speaker 00: What was the rationale that the board provided for that? [00:01:26] Speaker 03: The rationale, so I'll just give you a little bit of background that you can give the actual rationale, was at the time it was a challenge [00:01:32] Speaker 03: to the written description. [00:01:35] Speaker 03: I think that was raised in the earlier issue in some of the discussion back and forth. [00:01:40] Speaker 03: What ended up happening is the resolution was, as a result of that resolution, was if you took the word contrast agent embodiment or contrast agent out of claim 99 at the time, the parties had reached a conclusion that SPEC would not have priority for that. [00:01:55] Speaker 03: So what they said was, we want to continue to dispute the contrast agent embodiment and propose that to be put into a second account. [00:02:02] Speaker 03: We want a second count and fight over that. [00:02:04] Speaker 03: And we'll concede priority, not written description, priority for a count where the contrast agent is removed. [00:02:10] Speaker 03: Apparently, the parties had exchanged proofs, and they were willing to make that concession at that time. [00:02:15] Speaker 03: But in the same exact paper at the same exact time, they had also requested the additional count that included the lipophilic drug and the contrast agent and asked for that to stay in pursuit. [00:02:28] Speaker 03: And what the board said in that first interference was, [00:02:31] Speaker 03: We will let you take adverse judgment on the count with the contrasted agent embodiment removed. [00:02:38] Speaker 03: And we will not have an interference over the second one. [00:02:42] Speaker 03: And the stated reasons were, I believe actually the exact words, were just speedy and inexpensive resolution of the interference. [00:02:53] Speaker 03: And we think that's consistent with some of the other decisions that were made in the case, too, because the parties that asked to add other applications, for example, that had claimed related subject matter [00:03:02] Speaker 03: Those had not completed examination. [00:03:04] Speaker 03: They had not been examined by an examiner. [00:03:06] Speaker 03: Just like the contrast, agent embodiment had not been a claim that had been per se directly examined by an examiner. [00:03:11] Speaker 03: And the board hadn't allowed those going. [00:03:13] Speaker 03: This is actually fairly common board practice to have an interference over an issue that's right, really is what went on here. [00:03:19] Speaker 03: And I think a fair reading of the record is they weren't disallowed or told you can't have the second count in that first interference because it's not patently distinct on the merits. [00:03:30] Speaker 03: or because you're procedurally defective. [00:03:33] Speaker 03: At that point, they were just told, it's convenient for us to resolve the matter this way. [00:03:37] Speaker 03: Now, the contrast agent embodiment. [00:03:39] Speaker 00: So with that claim, just so I understand. [00:03:40] Speaker 00: Sure. [00:03:41] Speaker 00: I think it was 99. [00:03:42] Speaker 00: It was 99 and then 100. [00:03:43] Speaker 00: If that interference were to have continued, there still would be a determination on written description? [00:03:48] Speaker 03: There still would have been, yes. [00:03:50] Speaker 03: That issue was preserved. [00:03:51] Speaker 03: And it's very important to understand that the judgment awarded [00:03:53] Speaker 03: was not written description. [00:03:55] Speaker 03: There was a judgment on priority of the count that was in dispute. [00:03:58] Speaker 03: And that's all that was resolved in the first interference. [00:04:01] Speaker 03: That's absolutely all that was resolved is that one count consisting of, not comprising, consisting of the lipophilic drug, that's what was decided in the first interference. [00:04:10] Speaker 03: SPEC was never had that opportunity to pursue the count where it had the drug in the contrast agent embodiment. [00:04:19] Speaker 03: And to go to one of the other points, this is not an untimely thing. [00:04:22] Speaker 03: There was a notion of whether this was untimely in the record. [00:04:25] Speaker 00: What was the timing on the determination that claim 99 was no longer going to be in the first interference with respect to specs then request for adverse judgment? [00:04:36] Speaker 03: OK, so the timing is the contrast agent embodiment had always been the case from the outset. [00:04:42] Speaker 03: Then we come up to this point where claim 99, contrast agent embodiment because it was an option in the original claim is what I'm saying. [00:04:49] Speaker 03: So the original claim really had the original count, I should say, had both. [00:04:53] Speaker 03: Then when we come up to the point of claim 99, the parties came back, and this is in the record, with two requests. [00:05:01] Speaker 03: And this is where I think is what we call a reasonable litigant's position and a reasonable compromise. [00:05:06] Speaker 03: Speck said, we're happy to have a count that takes the contrast agent out. [00:05:11] Speaker 03: And we would concede priority to that, and that would settle that issue. [00:05:15] Speaker 03: But we also want to continue having a fight over, a dispute over the embodiment where the contrast agent. [00:05:21] Speaker 03: Those were simultaneous. [00:05:22] Speaker 03: Those are on the exact same phone call, and the order resulted from that phone call. [00:05:26] Speaker 03: And the decision was, we'll take the adverse judgment on the first, and we won't continue with the second. [00:05:31] Speaker 03: Not on the merits, not because you were too late, and there was no other explanation except for the words that just speedy and inexpensive resolutionally interference. [00:05:40] Speaker 03: It's not an unusual practice to have an unexamined, something that hadn't been before the examiner, as to spec. [00:05:46] Speaker 03: Interferences are significant investments, but the board resources to have it go back to the examiner, let them see it, and live and fight another day. [00:05:52] Speaker 00: I have another question for you, which is in the patentable distinctness. [00:05:56] Speaker 00: That's just a one-way determination, right? [00:05:58] Speaker 00: It's not a two-way determination of patentable distinctness, right? [00:06:02] Speaker 03: This is a one-way distinct test. [00:06:04] Speaker 03: Yes, that's right. [00:06:04] Speaker 03: I don't think we contended it was two-way. [00:06:06] Speaker 03: It's a one-way test. [00:06:08] Speaker 03: I believe at the time of declaring interference can be two-way. [00:06:11] Speaker 03: But for the purposes of applying the judgment to the future, it's one-way. [00:06:16] Speaker 03: So where was I here? [00:06:17] Speaker 03: So the consisting of issue actually does, it really affects a couple of things here. [00:06:23] Speaker 03: One, it affects the patentable distinctness too. [00:06:24] Speaker 03: But it also really affects in sort of the sum total of what race judicata is a little bit all about. [00:06:30] Speaker 03: Because we're not talking about a catheter with a balloon [00:06:35] Speaker 03: like a physical product that was sitting on my desk, and someone skilled in the art is wondering, could I add a contrast agent to it? [00:06:42] Speaker 03: We're dealing with a claim. [00:06:43] Speaker 03: The claim says consisting of, which means you can't add anything to it. [00:06:47] Speaker 03: But we're even dealing with something that's a little bit more than a claim. [00:06:50] Speaker 03: We're dealing with a count. [00:06:52] Speaker 03: It's drafted like a claim, but it defines what the dispute was in that first interference. [00:06:58] Speaker 03: It defines what evidence spec could have offered. [00:07:01] Speaker 03: The reason spec conceded priority on a consisting of claim that consists of the lipofilic drug was obviously it had reached the conclusion that it didn't have first inventorship of that. [00:07:14] Speaker 03: It couldn't use any first inventorship of, let's say, an embodiment with the drug and the contrast agent because that's irrelevant. [00:07:22] Speaker 03: The count isn't just like a claim defining an invention. [00:07:25] Speaker 03: It defines what's in and what's out in terms of proof. [00:07:29] Speaker 03: And that's very important to understand [00:07:31] Speaker 03: what the judgment decided and what SPEC had an opportunity to present. [00:07:35] Speaker 03: Issued preclusion really shouldn't fundamentally attach to the contrast agent embodiment. [00:07:41] Speaker 03: It was not adjudicated on the merits. [00:07:43] Speaker 03: SPEC was not told that it was procedurally deficient in presenting that. [00:07:47] Speaker 03: And in fact, the opportunity to present evidence of that embodiment had been in the proceeding, that first interference, from day one until, at the very last minute, the board somewhat [00:08:00] Speaker 03: took a split decision on what was their compromise on how to deal with this. [00:08:03] Speaker 00: I hear what you're saying. [00:08:03] Speaker 00: I hear the equitable argument you're making. [00:08:05] Speaker 00: Yes. [00:08:05] Speaker 00: But I'm wondering, isn't some of your concern almost implicit in the test that we are supposed to undertake, which is with this patentably distinct analysis. [00:08:16] Speaker 00: You say that spec agrees it didn't have first inventorship of what is in claim 100. [00:08:22] Speaker 00: But if it's not patentably distinct from the count in the second interference, [00:08:26] Speaker 00: then I'm not sure what the import is. [00:08:28] Speaker 00: It means that we didn't have the first claim of inventorship for something that's not even patently distinct. [00:08:34] Speaker 03: Well, but here's where the unfairness and these things working together. [00:08:38] Speaker 03: And this is more, and I believe it's the Follett case. [00:08:41] Speaker 03: So the Follett case, the count that was decided was 6 to 13 angstroms. [00:08:46] Speaker 03: And Follett had said, I really think I could put on my priority proves for 5 to 15, I believe was the fact pattern. [00:08:54] Speaker 03: So we're talking. [00:08:55] Speaker 03: uh... hundred million centimeters i think that action was and the the board said the first appearance now we're gonna go six to thirteen in the ccp a said well you know it's really important here is not that five is patently distinct from six in that case they said it probably is but the important thing is that for less could have gotten a different outcome because the five anxious it could have won the case with first inventorship of five actions [00:09:21] Speaker 03: Apparently, you couldn't win with 6 to 13, but it could have won with proof of a 5. [00:09:25] Speaker 03: And it had asked for a 5 to be the original count. [00:09:28] Speaker 03: So it's not just, are these the same invention? [00:09:31] Speaker 03: You also have to factor in, with the scope of proof that is permitted as different, the outcome could have been very different. [00:09:37] Speaker 03: And we could be having the exact same opposite argument. [00:09:40] Speaker 03: If the board in the original case had said, I'm only going to hear this about the contrast agent embodiment and the drug together, [00:09:46] Speaker 03: The very well the outcome could have been absolutely different, and it would have the same exact argument would we be sitting at different tables. [00:09:52] Speaker 03: And I think that's really important is this judgment. [00:09:55] Speaker 03: It's not just about are the inventions really similar. [00:09:58] Speaker 03: It's who had an opportunity to prove something. [00:10:00] Speaker 03: And the outcome is really driven by what count of the board chose. [00:10:04] Speaker 03: In all honesty, they should have even chose both. [00:10:07] Speaker 03: They should have gone with the original one that allowed the best, broadest offer of proof to have all the evidence going. [00:10:13] Speaker 03: And they just did it. [00:10:14] Speaker 03: So the patentable distinction, in Ferlett, it really does say that, even if it's patentably distinct, they have to have a chance, if they requested that chance, to make that proof that at least we get the right judgment, or at least we get the right facts into the record in that first case. [00:10:29] Speaker 03: Krogel, this court, cited Ferlett and said, yeah, one way to deal with these kinds of situations is to make sure you ask. [00:10:35] Speaker 03: Krogel was found in Deference Estoppel. [00:10:38] Speaker 03: But they even pointed out that Kroger lost because he didn't even try. [00:10:42] Speaker 03: My client tried. [00:10:43] Speaker 03: They tried everything they could. [00:10:44] Speaker 03: They didn't get a decision on the merits. [00:10:46] Speaker 03: And that's what that authorizations of motions are. [00:10:49] Speaker 03: They just didn't get their day in court that first time around. [00:10:52] Speaker 03: I'm into my rebuttal time. [00:10:54] Speaker 03: I'm happy to take any questions at this moment. [00:10:56] Speaker 03: But I'd also like a few minutes of my own. [00:10:59] Speaker 03: Thank you. [00:11:11] Speaker 02: Mr. Brown, sir. [00:11:13] Speaker 02: Good morning. [00:11:13] Speaker 02: May it please the court? [00:11:15] Speaker 02: This is the rare bird case. [00:11:17] Speaker 02: This is an interference matter that's straightforward, non-technical, lucid. [00:11:22] Speaker 02: In the first interference, SPEC requested adverse judgment. [00:11:25] Speaker 02: In the second interference, the board issued an order to show cause on estoppel, and SPEC failed to meet its burden to show that there was a new interference to be had, to show that there was something significantly different from the prior interference. [00:11:38] Speaker 02: There's really no reason to have a second interference now since what was decided in the first interference, what would go into a second interference, could have been decided and was decided in the first one. [00:11:51] Speaker 02: Looking at the order to show cause in the current interference, it's a proper action by the board. [00:11:57] Speaker 02: The Biogen case talks about the importance of orders to show cause in setting burdens of proof, things like that. [00:12:04] Speaker 00: How do you respond to the point about claim 99 and how [00:12:08] Speaker 00: It's unfair in the sense that there was this understanding when they took adverse judgment that claim 99 would still stand and there would be an interference on claim 99. [00:12:19] Speaker 02: Your Honor, I think that's not in the record. [00:12:22] Speaker 02: I think the record shows that at the time that there was a second conference call on behalf of both parties, of Speck and Bates, to decide on what Speck's only claim would be. [00:12:37] Speaker 02: That there was a discussion about the claim 99 would avoid the written description issues that Bates had raised. [00:12:46] Speaker 02: And when Speck later asked, we would like another claim, we would like another count, Bates told the board, urged the board to find that untimely because we were well after the motion process. [00:13:01] Speaker 02: The board made its decision to allow the replacement of Speck's claim at Speck's request. [00:13:08] Speaker 02: and at the same time made the decision not to allow a second claim in an order, I don't have the date right to hand, but it wasn't until the next day that SPEC actually decided to request adverse judgment. [00:13:23] Speaker 02: So there was time for SPEC to look at the judgment to decide what it wanted to do and proceeded with adverse judgment. [00:13:34] Speaker 02: Spec never made any issue with respect to the order to show cause that was issued in the current interference, so it's presumed to be proper. [00:13:43] Speaker 02: Instead, it responded substantively with only two arguments. [00:13:48] Speaker 02: One was that its current claims were patentably distinct from the prior subject matter and the prior interference. [00:13:55] Speaker 02: And two, that even if it had wanted to put its current claims in the first interference, that would have been futile. [00:14:02] Speaker 02: The board wouldn't have allowed it. [00:14:04] Speaker 02: That futility of offering its current claims was put paid to by the Crokl decision, saying that a party can't unilaterally assume what's futile or what the board is going to do. [00:14:15] Speaker 02: You have to make that effort. [00:14:17] Speaker 02: But from an analysis perspective, the board made the proper analysis in this case. [00:14:23] Speaker 02: It followed the controlling Biogen and Deckler decisions in dealing with spec showing. [00:14:29] Speaker 02: All that spec provided was attorney argument regarding the language of the claims, language of the counts. [00:14:36] Speaker 02: It provided some bits from prosecution history. [00:14:39] Speaker 02: Biogen said even a restriction requirement from the prosecution history isn't probative evidence of patentable distinctness. [00:14:46] Speaker 01: What evidence can the court properly look at to make the determination in finding something patently indistinct? [00:14:58] Speaker 02: Well, just as the board did, Your Honor, [00:15:00] Speaker 02: They looked first to see if the current claims would be anticipated by the prior account, by the prior subject matter, found that it wouldn't. [00:15:12] Speaker 02: But you then have to go on to a question of obviousness. [00:15:16] Speaker 02: And the real question before the board was, did SPEC establish, effectively, [00:15:21] Speaker 02: that its current claims were non-obvious over subject matter that was in the prior case. [00:15:28] Speaker 02: In order to do that, should it? [00:15:29] Speaker 00: When you say subject matter in the prior case, you're saying specifically the count, claim 100, right? [00:15:35] Speaker 02: I'm saying the count, but I'm also saying the claims that were involved in the prior case, Your Honor. [00:15:40] Speaker 00: Those claims that correspond to the count. [00:15:43] Speaker 02: Yes. [00:15:43] Speaker 02: Yes, Your Honor. [00:15:44] Speaker 02: Thank you. [00:15:47] Speaker 02: With respect to evidence, thank you, Your Honor. [00:15:49] Speaker 02: The evidence that should have been presented were exactly the sorts of evidence that one would provide in an obviousness or non-obviousness question. [00:15:57] Speaker 02: You should provide other references. [00:15:59] Speaker 02: You should provide evidence of the state of the art, hard evidence of the state of the art. [00:16:03] Speaker 02: You should provide declarations from fact or expert witnesses. [00:16:06] Speaker 02: You should provide the declaration that the board's own standing order suggests that you provide. [00:16:11] Speaker 02: None of that appears in the case. [00:16:14] Speaker 01: So your answer is? [00:16:15] Speaker 01: There isn't any evidence. [00:16:16] Speaker 02: There isn't any evidence, Your Honor. [00:16:17] Speaker 02: You're right. [00:16:20] Speaker 02: More to Your Honor's point about the claims in the prior case, the Deckler case specifically says that Estoppel bars claims for inventions that were not patentably distinct from those in the prior case, in the lost case. [00:16:34] Speaker 02: When we talk about those, we're talking about the prior counts. [00:16:37] Speaker 02: We're talking about the prior claims for inventions. [00:16:40] Speaker 02: SPEC never presented any evidence as to how its current claims [00:16:44] Speaker 02: were different from Bates Claim 23 that was involved in the prior interference. [00:16:49] Speaker 02: Looking at a few of SPEC's current arguments in its briefing to the court, they're just really not supportable. [00:16:59] Speaker 02: First of all, it spent a significant amount of ink on whether it did or did not request a second count. [00:17:05] Speaker 02: The board's order relies on estoppel by judgment. [00:17:10] Speaker 02: The SPEC acknowledged in its briefing that yes, this is an estoppel by judgment case. [00:17:14] Speaker 02: And the Biogen case puts paid to that argument that even if they had requested a second count properly, we believe that they didn't, but even if they had, that doesn't affect estoppel by judgment. [00:17:28] Speaker 02: So all of that argument is immaterial. [00:17:30] Speaker 02: its consisting of arguments are also unsupported. [00:17:34] Speaker 02: Even though SPEC had the burden of establishing patentable distinctness in this interference, it provided no case law to say that a count that says consisting of has no obviousness or no relation to an obviousness analysis at all. [00:17:54] Speaker 02: It didn't provide any case law counteracting the several cases that say even though [00:17:59] Speaker 02: two subject matters may be mutually exclusive, that doesn't mean that they're patentably distinct. [00:18:05] Speaker 02: And finally, their argument is based on a misunderstanding of the Rissa case, in Ray Rissa. [00:18:11] Speaker 02: They made the argument that consisting of has a particular meaning in the law, and since Rissa says you can't use a count as prior art, then there's no place for you to adopt the count that has consisting of in this obviousness analysis. [00:18:30] Speaker 02: Rissa says actually precisely the opposite. [00:18:33] Speaker 02: Rissa says that when a count is lost, [00:18:35] Speaker 02: It behaves as prior art under section 103. [00:18:42] Speaker 02: So this is not a case of claim construction. [00:18:44] Speaker 02: This is a case of prior art. [00:18:46] Speaker 02: It's a case of disclosure. [00:18:47] Speaker 02: You see what the account, what the prior claims disclose. [00:18:51] Speaker 02: You assess it in the normal manner, in light of the other art, in light of the knowledge of ordinary skill. [00:18:58] Speaker 02: And you see what is patentable, what isn't patentable, what is or is not obvious over it. [00:19:04] Speaker 02: Regarding their arguments on lack of opportunity to litigate, we have to bear in mind that SPEC provoked the first interference. [00:19:13] Speaker 02: They provided the claim that interfered. [00:19:15] Speaker 02: They provided the count that interfered. [00:19:17] Speaker 02: They provided the first information to the PTO as to why an interference should be declared. [00:19:23] Speaker 02: They proposed motions. [00:19:25] Speaker 02: They joined issue once the interference was declared. [00:19:28] Speaker 02: They proposed motions. [00:19:30] Speaker 02: They voluntarily amended their claims. [00:19:33] Speaker 02: They proceeded along in litigating. [00:19:36] Speaker 02: They've admitted that what they wanted was in the interference to start with. [00:19:40] Speaker 02: At some point, they made a pivot, decided on a different strategy. [00:19:45] Speaker 02: Perhaps they didn't realize the extent of that change in strategy and the estoppel that that would create. [00:19:51] Speaker 02: But that's not Bates' fault. [00:19:54] Speaker 02: That shouldn't excuse the opportunity to circumvent the outcome of the prior interference at the expense of the Bates party. [00:20:06] Speaker 02: And in the current interference, the board gave them another chance. [00:20:11] Speaker 02: The board gave them the order to show cause, saying that if you believe that you have something to fight about in the second interference, show us. [00:20:21] Speaker 02: And they simply didn't. [00:20:22] Speaker 02: So if what spec means is that they didn't have an opportunity to litigate in the first interference, that's manifestly wrong. [00:20:31] Speaker 02: They did litigate, and they chose a course of action that they may not regret. [00:20:35] Speaker 02: If spec means that there was no opportunity to litigate the contrast agent or no opportunity to establish that the contrast agent claims were in some way patently distinct, they certainly didn't have to change their claims in the original interference or request adverse judgment. [00:20:54] Speaker 02: And they certainly could have put forth evidence with respect to the order to show cause to establish that they had a case to prove. [00:21:04] Speaker 02: I do also want to mention a couple of points in particular rebuttal to Speck's argument. [00:21:10] Speaker 02: First on, the idea that this is not appropriate case for issue preclusion or race judicata, however you care to phrase it. [00:21:20] Speaker 02: It should be remembered that even though Dekler biogen say that interference estoppel may have some relationship or may come out of some principles of race judicata, [00:21:32] Speaker 02: It's not the same thing. [00:21:33] Speaker 02: It's a creature of rule and of case law, long involved, that says that once you have a judgment on account, the subject matter of that interference, the count and claims act as a law to anything that is patentably indistinct. [00:21:52] Speaker 02: Board rule 127, 37 CFR 41.127. [00:21:57] Speaker 02: makes the estoppel provision, puts it right into the rule. [00:22:03] Speaker 02: And as we pointed out in our briefing, it's crucial to give high weight, deference, high deference to the patent office and their interpretation of their own rules. [00:22:15] Speaker 02: With regard to their citation of the case in Ray Frolet, I would observe that that's an old rules interference in a case where not every issue that could be brought forth in a current interference was able to be brought forward. [00:22:31] Speaker 02: That's one distinction. [00:22:32] Speaker 02: And then there's also footnote five, which says, which acknowledges that there are changes underway in the patent office in interference proceedings and that that particular case applies to that particular set of facts only. [00:22:47] Speaker 02: To summarize, SPEC had an opportunity in the first interference, had an opportunity in the second interference, and voluntarily relinquished its first interference, didn't make it showing in the second interference. [00:23:00] Speaker 02: This is precisely the case where interference estoppel is made for. [00:23:05] Speaker 02: There's just no additional issue in the second interference that couldn't have been dealt with or wasn't dealt with in the first one. [00:23:13] Speaker 02: And there's no reason to disturb the finality of that judgment. [00:23:18] Speaker 01: Thank you, counsel. [00:23:26] Speaker 03: Your honors, both Bates and the board actually rely a significant extent on claim 23. [00:23:31] Speaker 03: And I think this is an important point to touch on. [00:23:34] Speaker 03: The fact that claim 23 was in Bates' sets of claims doesn't really mean anything to spec at this point. [00:23:41] Speaker 03: The judgment was about the lost count. [00:23:44] Speaker 03: Who invented that first? [00:23:46] Speaker 03: What a corresponding claim is [00:23:48] Speaker 03: is what claims of a party it will lose in the event it loses the count. [00:23:53] Speaker 03: At the beginning of the case, claim 23 was properly in, because the original formulation of that interference count included the contrast agent embodiment, just like is recited in claim 23. [00:24:02] Speaker 03: As the interference progressed and was narrowed so that the count no longer had the contrast agent embodiment, and Speck was told, you're not going to be pursuing a count for that embodiment and this interference. [00:24:13] Speaker 03: At that point, Speck is the losing party. [00:24:16] Speaker 03: It makes no sense for SPEC to go challenge the designation of Bates's 23 to a count that Bates is winning. [00:24:23] Speaker 03: It would be completely advisory and completely unripe for SPEC to actually even make an issue out of that. [00:24:30] Speaker 03: So the fact that claim 23 was tacked on to the lost count at the end of the interference is of no moment if it's at a time where SPEC is the losing party. [00:24:40] Speaker 03: Corresponding counts only matter to the claim owner or the person who has that claim. [00:24:45] Speaker 03: that is losing. [00:24:47] Speaker 03: Speck was out of the case. [00:24:48] Speaker 03: It didn't have a claim 23. [00:24:49] Speaker 03: So that's of no moment. [00:24:51] Speaker 03: The point on Froulet, actually, with that notation of footnote 5, what the board was referring to, or this court was referring to, the CCPA, was the creation of what was called sort of the phantom count or generic counts at the time. [00:25:04] Speaker 03: And there's a very important distinction between how Froulet operated at the time and Biogen. [00:25:09] Speaker 03: In the Biogen case, [00:25:11] Speaker 03: Fears, the losing interference in that situation, got authorization for a motion to add a second count. [00:25:17] Speaker 03: That motion was litigated and heard by the board in the first interference. [00:25:21] Speaker 03: And Fears was bound by that outcome. [00:25:24] Speaker 03: Fears got a chance to file a motion with evidence, with all that other good stuff that you get to do under the current board rules. [00:25:30] Speaker 03: So in Biogen, Fears loses in the second case, not just because of patentable and distinction, but it got a full and fair opportunity to litigate the issue. [00:25:40] Speaker 03: He's correct about Follett, because back in those earlier days, you didn't really have those debates before the board. [00:25:46] Speaker 03: How the interference was framed was largely delegated down to the examiner. [00:25:50] Speaker 03: They weren't appealable issues. [00:25:52] Speaker 03: So you could request an additional count. [00:25:54] Speaker 03: And if you didn't get it, you were said to have made a motion and preserved the issue. [00:25:59] Speaker 03: This situation is much more like Follett, because we're talking about what is essentially discretionary case management issues. [00:26:05] Speaker 03: is we asked for authorization to even have a motion about this. [00:26:09] Speaker 03: Didn't file a motion. [00:26:10] Speaker 03: Just said, can we even entertain the notion of this being added, this second count? [00:26:15] Speaker 03: And the answer was no. [00:26:16] Speaker 03: And it was treated just like every other unripe issue had been in the interference to that point. [00:26:21] Speaker 03: That is much more like Froulet, where an examiner says, I'm not going to put that claim in the case and send it up to the board that way. [00:26:27] Speaker 03: So the notion, if you do read both cases, they actually do talk about motions. [00:26:32] Speaker 03: But what's included in a motion in modern day practice [00:26:35] Speaker 03: is much different, full of evidence, the entire record. [00:26:38] Speaker 03: Biogen got that chance. [00:26:39] Speaker 03: My clients never got that chance. [00:26:42] Speaker 03: So fundamentally, what we could have here is a really bad situation in the sense that one of two things should have happened in the first interference. [00:26:51] Speaker 03: We should have had a broader count that included a chance to either embodiment could have won the case, right? [00:26:57] Speaker 03: And we would say they're patently indistinct. [00:27:00] Speaker 03: But who invented? [00:27:00] Speaker 03: Either one should win first priority. [00:27:03] Speaker 03: Either one should be the first inventor. [00:27:04] Speaker 03: Well, we ended up with an account that only allowed one version of this invention, if you want to treat them as patently distinct, to go forward. [00:27:12] Speaker 03: And the second version was precluded. [00:27:13] Speaker 03: And my client needs that opportunity and deserves that opportunity because they didn't get that the first time around. [00:27:19] Speaker 03: And that should not happen as a result of what appears to be a case management decision rather than a merits decision or some decision that indicates procedural deficiency. [00:27:28] Speaker 03: If you read that order, those requests came on the same day. [00:27:31] Speaker 03: And in no way can spec be faulted for taking adverse judgment [00:27:34] Speaker 03: They had just got off the phone with a judge and received an order saying, I'm going to let you go with this count, which you concede you're going to lose. [00:27:41] Speaker 03: And I'm not permitting this to go forward. [00:27:42] Speaker 03: And told them to take adverse judgment. [00:27:45] Speaker 03: That is basically following the judge's orders. [00:27:47] Speaker 03: And I think that's the right thing to do. [00:27:49] Speaker 03: And that's not any fault of theirs. [00:27:51] Speaker 03: And they had done everything they could in that case to preserve their right for a future date. [00:27:54] Speaker 03: And all we're asking for is the right to have that future date and just put on a priority case before the board. [00:27:59] Speaker 03: Nothing else needs to be done. [00:28:00] Speaker 03: And that's all we're asking for. [00:28:02] Speaker 03: So if there are no other questions, I rest my case. [00:28:05] Speaker 03: I think that will stand some mail.