[00:00:00] Speaker 00:
2504 Droplets, Inc.

[00:00:03] Speaker 00:
versus E-Trade Bank.

[00:00:05] Speaker 00:
Mr. Geiser.

[00:00:06] Speaker 00:
Thank you, Your Honor, and may it please the Court.

[00:00:09] Speaker 00:
When Droplets explicitly incorporated the disclosure of the 838 patent, it achieved exactly what it would have done by reproducing that text verbatim.

[00:00:18] Speaker 00:
Incorporation is expressly authorized by controlling regulation, and its use is even approved for satisfying core elements of the Patent Act.

[00:00:26] Speaker 05:
Well, it's not expressly authorized for this purpose, is it?

[00:00:30] Speaker 00:
Well, it's expressly authorized generally for both essential material and... No, but I mean not expressly authorized.

[00:00:36] Speaker 05:
There's no reference to this aspect of 120 in the regulations, right?

[00:00:42] Speaker 00:
That's true, but there's also nothing on the rules face that precludes the use of incorporation by reference for priority claims.

[00:00:48] Speaker 05:
Okay, but that's a different argument.

[00:00:49] Speaker 05:
That's not expressly authorized.

[00:00:51] Speaker 00:
Well, our point, Your Honor, is that it expressly authorizes incorporation by reference generally.

[00:00:56] Speaker 00:
It sets off a broad authority that parties can use incorporation by reference as a reliable drafting tool to satisfy the... If we disagree with you on that, you lose, don't you?

[00:01:06] Speaker 00:
Not necessarily, Your Honor, because this court's case law also authorizes incorporation by reference and did so before the rule was promulgated in this case.

[00:01:14] Speaker 00:
But I hope you actually agree with me on our reading of the rule.

[00:01:17] Speaker 03:
And I think if you look at it... But I have a problem with... I mean, even if we did agree with you on the reading of the rule, that it could arguably be read that way, or even most reasonably be read that way, how does the rule trump the statutory provision that says it must be explicit, the reference?

[00:01:34] Speaker 00:
Well, Your Honor, just to be clear, it absolutely does not trump the statute.

[00:01:37] Speaker 00:
It's a way of satisfying the statute.

[00:01:38] Speaker 00:
And if you look at the text of Section 120, it says that the

[00:01:42] Speaker 00:
It says that the application has to contain or be amended to contain a specific reference.

[00:01:47] Speaker 00:
That's exactly the same as the language if you look to Section 112.

[00:01:50] Speaker 00:
It says the specification shall contain a written description in such full, clear, concise, and exact terms.

[00:01:56] Speaker 00:
Everyone agrees that Section 112's requirements can be satisfied with the corporation by reference without trumping Section 112.

[00:02:03] Speaker 00:
I don't see any reason then that the same incorporation by reference technique couldn't satisfy the terms of 120.

[00:02:09] Speaker 04:
How do you deal with Encyclopedia Britannica?

[00:02:12] Speaker 00:
Encyclopedia Britannica simply says, and we don't take any issue with it, that you do have to actually provide a specific reference to each link in the chain in a, you know, particularized manner that identifies exactly the documents that are being incorporated.

[00:02:26] Speaker 00:
Our contention is not that Rule 1.57 avoids that requirement.

[00:02:31] Speaker 00:
It's simply a way to satisfy it.

[00:02:32] Speaker 00:
If you import text from another document that you've identified with particularity that itself provides the full chain,

[00:02:39] Speaker 00:
And it has that specific reference.

[00:02:41] Speaker 05:
The problem with that is, though, on the face of the patent, you can't tell what's being claimed.

[00:02:47] Speaker 05:
I mean, you know, the purpose of the statutory reference is to require that it be on the face of the patent so that people don't have to go rooting around trying to figure out what the priority claim is.

[00:03:00] Speaker 05:
And if you put it on the face of the patent, as Encyclopedia Britannica and other cases seem to require, then

[00:03:07] Speaker 05:
it's apparent to people what the priority claim is.

[00:03:11] Speaker 05:
I mean, isn't that an interest that's served by the statute here?

[00:03:14] Speaker 00:
Sure, Your Honor, and it's also an interest in Section 112 to put on the face of the patent the written description, to set forth the best mode, to specifically conclude with claims, to describe even the structure for means plus function claiming.

[00:03:27] Speaker 00:
All those things also are served by putting it on the face of the patent, yet rule point 1.57, everyone agrees, can satisfy those requirements.

[00:03:35] Speaker 00:
I think it's materially indistinguishable to say that this also can satisfy 120.

[00:03:39] Speaker 00:
Section 120 does not say that it has to be written verbatim directly on the text.

[00:03:45] Speaker 00:
It simply says it has to contain a specific reference.

[00:03:48] Speaker 00:
This court in Telemac said that when you incorporate a document by reference, it's exactly tantamount to explicitly reproducing that exact text on the face of the patent.

[00:03:59] Speaker 05:
And again, the... Is there some problem with making reference to the

[00:04:03] Speaker 05:
to the claim priority on the face of the patent instead of doing it by incorporation?

[00:04:09] Speaker 00:
No, Your Honor.

[00:04:09] Speaker 00:
And to be clear, this was not the most artful way to draft a patent.

[00:04:13] Speaker 00:
We agree with that.

[00:04:14] Speaker 00:
I think hindsight is 20-20.

[00:04:15] Speaker 00:
I think that we would have done it differently seeing the way that this is played out.

[00:04:20] Speaker 00:
But this is a real property right, backed by substantial investment and ingenuity.

[00:04:25] Speaker 00:
And the question is whether the regulated community reading the text of Rule 1.57, which on its face does not preclude the use

[00:04:33] Speaker 00:
of incorporation by reference for a priority.

[00:04:35] Speaker 00:
It's a broad authority.

[00:04:37] Speaker 00:
It stands as a broad authority to use incorporation by reference to satisfy even the key elements of Section 112.

[00:04:43] Speaker 00:
Let me ask you about our.

[00:04:47] Speaker 04:
In the blue brief, you argue that our deference is deeply flawed and no deference of any kind is truly appropriate in this context.

[00:04:55] Speaker 04:
Are you actually contending that we're not bound by our?

[00:04:58] Speaker 00:
No, Your Honor, but I think as some members of this Court have pointed out, ours is kind of in its last hour, and I think when it does reach the Supreme Court, I think that will be the end of that deference.

[00:05:08] Speaker 00:
But you don't need to decide that here, because our contention is that the agency's position is actually incompatible with the text of the regulation.

[00:05:16] Speaker 00:
The way that regulations typically work, and the way that, just like reading a stat sheet, you... Let me ask you a fact question.

[00:05:22] Speaker 04:
Sure.

[00:05:24] Speaker 04:
In the Green Brief at 18, the government argues that

[00:05:27] Speaker 04:
Droklitz, quote, had notice of the 115 patents limited priority claim well before the patent issued, but took no action to alter the priority date.

[00:05:38] Speaker 04:
So why shouldn't we rule that you're not entitled to claim priority to the 917 provisional on that fact alone?

[00:05:47] Speaker 00:
Well, I think a few reasons, Your Honor.

[00:05:49] Speaker 00:
First, that wasn't the basis that the board ruled.

[00:05:51] Speaker 00:
And of course, under just basic APA principles, you're bound by the stated reasons provided by the board.

[00:05:57] Speaker 00:
I think more importantly, not even the government pointing that out suggests that there's any legal relevance to the, I think you're referring to the corrected filing receipt.

[00:06:05] Speaker 00:
The corrected filing receipt has absolutely no legal bearing whatsoever.

[00:06:08] Speaker 00:
It has no more bearing than the original filing receipt that actually stated the correct priority chain, just as the bib data sheet originally stated the correct priority chain.

[00:06:17] Speaker 00:
So the question is really,

[00:06:19] Speaker 00:
What is the legal effect of Rule 1.57?

[00:06:21] Speaker 05:
It has to do with the fairness of applying a strict rule here.

[00:06:24] Speaker 05:
You had notice of the strict rule, and you chose not to abide by it.

[00:06:30] Speaker 00:
Well, no, Your Honor.

[00:06:30] Speaker 00:
And again, too, the corrected filing receipt, just to be clear, it did not say that priority is limited to the 838 patent.

[00:06:38] Speaker 00:
It simply said that this is claiming priority to a continuation of the 838 patent.

[00:06:44] Speaker 00:
which is actually consistent with saying then the 838 patent then claims priority to the 917 patent.

[00:06:49] Speaker 00:
So again, if droplets had recognized, if we recognized it when we saw it, we might have taken action at the time.

[00:06:55] Speaker 00:
But I don't think there's any rule in law or logic that says that if we had the right to incorporate this material by reference under rule 1.57.

[00:07:03] Speaker 04:
Let me ask you this.

[00:07:05] Speaker 04:
In the blue brief, you quote the full text of 37CFR157C's definition of essential material.

[00:07:13] Speaker 04:
I don't see any reference to priority dates.

[00:07:17] Speaker 00:
That's true, Your Honor.

[00:07:17] Speaker 00:
You also don't see anything that precludes the use of priority.

[00:07:20] Speaker 00:
And let's look at the text and the structure of a 1.57, because I think that is actually the key.

[00:07:25] Speaker 04:
The plain text, if you start to... Well, you have to agree, then, that at least under 157C, it doesn't qualify.

[00:07:35] Speaker 00:
Oh, yes, Your Honor.

[00:07:36] Speaker 00:
Under C, it doesn't qualify.

[00:07:37] Speaker 00:
Priority is not one of the three enumerated examples of an essential material.

[00:07:43] Speaker 00:
The question is then, is it other material?

[00:07:45] Speaker 00:
And that's the way if you look at the text and the structure of it.

[00:07:48] Speaker 05:
Other non-essential material.

[00:07:50] Speaker 00:
Other, well it says non-essential is actually tucked in the middle of the sentence in a parenthetical.

[00:07:54] Speaker 00:
So if you read it most naturally, it simply says essential material can be incorporated by reference, focusing on very limited documents that you can use to make sure that there's absolutely no confusion.

[00:08:04] Speaker 00:
And then it gives broad authority to incorporate other material by reference.

[00:08:08] Speaker 00:
and as a slightly broader set of material, and it simply excludes the use of hyperlinks.

[00:08:13] Speaker 04:
But that's subject matter referred to for purposes of indicating the background of the invention or illustrating the state of the art, right?

[00:08:25] Speaker 00:
No, Your Honor.

[00:08:25] Speaker 00:
And actually, what Your Honor's reading is from the MPEP, which is not.

[00:08:30] Speaker 00:
That appears nowhere in the rule.

[00:08:32] Speaker 00:
It appears nowhere in the notice of final rulemaking, where the agency actually says something very different than that.

[00:08:38] Speaker 00:
And so maybe that will help to look at that.

[00:08:42] Speaker 00:
The only place where the MPEP is referenced in the Notice of Final Rulemaking is if you look at page 56.501 of the Federal Register, it references it in the first column.

[00:08:53] Speaker 00:
It says Section 1.57C codifies the practice in the MPEP Section 601.01P.

[00:09:00] Speaker 00:
If you go on to the second column and you see what Section D does, it is something very different.

[00:09:05] Speaker 00:
It defines the scope of incorporation by reference practice for other than in parentheses non-essential subject matter.

[00:09:11] Speaker 00:
There's nothing in this, it suggests, that incorporation by reference is limited to the practice for completeness in the MPEP.

[00:09:18] Speaker 03:
So the question... If the incorporation by reference provision is sufficient to cover this, then why do you need the other regulation that defines how to make a specific identification?

[00:09:30] Speaker 00:
I think because they address two different topics, Your Honor.

[00:09:33] Speaker 00:
One is describing what... I think that's the government's point.

[00:09:37] Speaker 00:
Well, no, no, no.

[00:09:38] Speaker 00:
I think it's a different point.

[00:09:40] Speaker 00:
The specific reference regulation describes the degree of particularity necessary to identify exactly what you're incorporating.

[00:09:46] Speaker 00:
You can't just wave your hand in the general direction of some prior application and say that's enough.

[00:09:51] Speaker 00:
You have to say it by serial number.

[00:09:52] Speaker 00:
You have to have the title, the date.

[00:09:54] Speaker 00:
That describes the degree of particularity.

[00:09:56] Speaker 00:
The incorporation by reference regulation describes how do you go about providing that material.

[00:10:02] Speaker 00:
And there are two ways you can do it.

[00:10:03] Speaker 00:
One, you can take your pen and you can write on the face of the application exactly with particularity the specific reference.

[00:10:10] Speaker 00:
And we admit that is a better way to do this.

[00:10:12] Speaker 00:
The other alternative way to do it is you can point to a document that has that exact priority chain and you can incorporate it by reference using the root words under 1.57b.

[00:10:22] Speaker 00:
We incorporate this by reference, identifying exactly the document that's being incorporated.

[00:10:27] Speaker 00:
And if it provides that specific reference, then it satisfies Section 120, just as it satisfies Section 112.

[00:10:34] Speaker 05:
You know, again, if you... Is that... Do you refer to that as non-essential material being incorporated?

[00:10:39] Speaker 00:
Priority is non-essential material.

[00:10:41] Speaker 00:
That's right, Your Honor.

[00:10:42] Speaker 05:
That's an odd kind of way to describe the priority identification as being non-essential material, because it is pretty essential if you want to get priority.

[00:10:52] Speaker 00:
Your Honor, what it does is it's pairing non-essential and essential material.

[00:10:57] Speaker 00:
So it defines essential material.

[00:10:59] Speaker 05:
I don't think you're addressing my point.

[00:11:01] Speaker 05:
If you were writing a regulation,

[00:11:04] Speaker 05:
to promoting corporation of a priority information, it would be quite odd to refer to that as non-essential material, wouldn't it?

[00:11:12] Speaker 00:
Well, yes and no, Your Honor, because again, you have to read it in the context of the regulation.

[00:11:17] Speaker 00:
I think the alternative reading actually is more odd, which says that anything that has legal effect presumably is essential in some sense.

[00:11:25] Speaker 00:
If you don't satisfy the requirement, then you lose.

[00:11:28] Speaker 04:
So there's no such... There really isn't any category.

[00:11:32] Speaker 04:
Essential and non-essential are all the same thing, and you can incorporate everything by reference.

[00:11:37] Speaker 00:
That's right, Your Honor, but you can reference different documents.

[00:11:40] Speaker 00:
That's the whole point of the regulation.

[00:11:42] Speaker 00:
It's specifying what documents can you incorporate for different things.

[00:11:46] Speaker 04:
Why'd they go to all that trouble then?

[00:11:48] Speaker 00:
They went to the trouble because they wanted to make sure that when you're satisfying Section 112, you're limited to the US patents and US patent applications.

[00:11:57] Speaker 00:
When you're satisfying any other provision of the Patent Act,

[00:12:00] Speaker 00:
And again, this gets back to your question, Judge Dyke.

[00:12:03] Speaker 00:
Surely, Section D isn't irrelevant.

[00:12:06] Speaker 00:
If Subsection D, other material, non-essential material, only refers to things that are absolutely irrelevant, it makes no difference whether you can incorporate them by reference or not.

[00:12:15] Speaker 00:
It has no effect.

[00:12:16] Speaker 00:
So surely Subsection D has some legal effect.

[00:12:19] Speaker 00:
It's dealing with some material that can be incorporated by reference that has some reason for doing that, where Subsection D is effectively referencing a null set.

[00:12:28] Speaker 00:
So our view is that subsection D authorizes incorporation by reference for everything that isn't essential material, gives you slightly broader category that you can use.

[00:12:37] Speaker 00:
And as long as the thing you've incorporated satisfies, with particularity, the specific reference requirement of section 120, then it satisfies the Patent Act just as it can for section 112.

[00:12:48] Speaker 00:
I seem eating to my rebuttal time.

[00:12:50] Speaker 05:
OK, you can save it.

[00:12:52] Speaker 00:
Thank you.

[00:12:53] Speaker 00:
Thank you, Mr. Blanchard.

[00:12:57] Speaker 05:
Ms.

[00:12:57] Speaker 05:
Craven?

[00:12:58] Speaker 02:
May it please the court?

[00:13:00] Speaker 02:
Section 120 and its implementing regulation 1.70 are clear.

[00:13:05] Speaker 02:
Priority claim requires a specific reference to each prior filed application by serial number and relationship.

[00:13:12] Speaker 02:
And this court has strictly construed 120 to put the burden on the patentee to provide a clear chain of priority.

[00:13:21] Speaker 03:
I found your argument very appealing.

[00:13:23] Speaker 03:
You know, begin with the statute, the regulation says essentially exactly what the statute says, end of inquiry.

[00:13:29] Speaker 03:
And I do like that, except for the fact that this 112 argument is a little troubling.

[00:13:34] Speaker 03:
112 essentially reads almost identically to 120 in terms of how you have to identify it.

[00:13:40] Speaker 03:
But all of a sudden, 112 is treated differently.

[00:13:44] Speaker 03:
So what's your response to that?

[00:13:46] Speaker 02:
Well, the incorporation by reference regulation specifically allows 112 material as essential material that can be incorporated by reference.

[00:13:55] Speaker 02:
There's no other statutory requirement that then is listed.

[00:14:00] Speaker 02:
Non-essential material, I think, naturally is the complement of essential material, and it's been in the EP since the 60s to be

[00:14:08] Speaker 02:
state-of-the-art, background of the inventions, things that complement, that are non-essential, but complement essential material.

[00:14:15] Speaker 02:
And I think the scope of what can be non-essential material shows you that Droplet's argument is unreasonable, because you can incorporate non-essential material by reference to foreign patent applications, non-patent publications, and those publications themselves can incorporate the information for reference.

[00:14:34] Speaker 02:
So the idea of the incorporation by reference statute is to

[00:14:38] Speaker 02:
get to allow applicants to give additional information about the background of the invention.

[00:14:46] Speaker 02:
But it doesn't have legal effect.

[00:14:48] Speaker 02:
You don't need it in the application.

[00:14:50] Speaker 02:
But 120, a priority claim, is essential for you to claim priority.

[00:14:57] Speaker 03:
So what you're saying is that it's not that the statute is being interpreted differently.

[00:15:02] Speaker 03:
It's just that you're allowing this essential material for 112 purposes.

[00:15:08] Speaker 03:
to be incorporated by reference.

[00:15:10] Speaker 02:
That's correct.

[00:15:11] Speaker 02:
And the purpose of that is then we don't want specifications don't have to balloon.

[00:15:15] Speaker 02:
If you have information in a series of applications, that information can be incorporated by reference to meet the 112 disclosure.

[00:15:23] Speaker 02:
But it's limited to US patents and US patent application publications because those we know that the public has access to.

[00:15:30] Speaker 02:
And that's essential for the 112 allowing people to be able to find that information.

[00:15:36] Speaker 02:
Here, for non-essential material,

[00:15:38] Speaker 02:
Any publication that you incorporate for reference, the public would now have to search to make sure that somehow there's not a priority claim in that.

[00:15:48] Speaker 02:
Because under Droplet's reading of non-essential material, a priority claim in a non-patent publication that was incorporated by reference would affect the priority claim.

[00:16:00] Speaker 02:
There's nothing hard about including a clear chain of priority.

[00:16:04] Speaker 04:
What's your response to?

[00:16:07] Speaker 04:
Droplet's Dupont v. McDermott magic words argument.

[00:16:16] Speaker 04:
Sorry, the words are then... It says, it argues, everyone immediately understood the proper data priorities such that the incorporation here readily satisfies 120's plain text and statutory support or purpose, and it subsides Dupont versus McDermott

[00:16:35] Speaker 04:
which says magic words are not required to claim priority.

[00:16:39] Speaker 02:
Well, I think the problem here is it's not so clear to the public reading the patent.

[00:16:44] Speaker 02:
On the face of the patent because of the corrected priority claim receipt, you only see the 838 patent.

[00:16:51] Speaker 02:
And then when you go to the specification, the only specific reference in the specification is to the 838 patent.

[00:16:59] Speaker 02:
And so no one would necessarily know that there's other

[00:17:04] Speaker 02:
other applications that they're claiming priority to.

[00:17:08] Speaker 02:
Droplets had notice for the corrective filing receipt.

[00:17:11] Speaker 02:
They also had notice when the 115 patent issued with on the face of the patent the 838 patent was the limited priority claim and they took no action.

[00:17:22] Speaker 02:
They could have filed a certificate of correction, a reissue application, but instead they sat on their hands and

[00:17:29] Speaker 02:
I think the burden should have been on them to correct it, as opposed to the public, to try and figure out what priority date they want.

[00:17:36] Speaker 03:
If we do get into the weeds of analyzing what's essential material and what's non-essential material, as a matter of logic, my problem is that if you have an agency that says there's essential material and non-essential material, it seems that that would be 100% of the landscape, the notion that you can have essential material, non-essential material, and then some other

[00:17:58] Speaker 03:
material out there?

[00:18:00] Speaker 02:
Well, I think the thing is the whole purpose of the incorporation by reference is for disclosure of the invention.

[00:18:06] Speaker 02:
And so essential and non-essential material are the entire universe of disclosures of the invention.

[00:18:12] Speaker 02:
The agency didn't contemplate that the non-essential material would be this other statutory requirements that are not about disclosure of the invention.

[00:18:21] Speaker 02:
At the same time, at the agency promulgated 1.57, they also amended

[00:18:26] Speaker 02:
1.78 to say that you could have multiple sentences for your priority claim to make sure that chain, because we want that chain to be clear.

[00:18:33] Speaker 02:
And sometimes it's clearer in several sentences.

[00:18:36] Speaker 02:
So when the agency was promulgating these regulations, they really did think, in corporation by reference, the entire bucket of essential and non-essential material was disclosure of the invention.

[00:18:47] Speaker 02:
I see a amount of time.

[00:18:48] Speaker 05:
Well, I have one more question.

[00:18:50] Speaker 05:
I want to bring you back to the 112 argument.

[00:18:53] Speaker 05:
Is there a difference between the language of 112 and 120 in terms of the specificity requirement?

[00:19:00] Speaker 05:
What is the actual language of 112?

[00:19:14] Speaker 02:
The specification shall contain a written description of the invention and the manner and process of making it and using it.

[00:19:22] Speaker 05:
which is not the same as the 120 language, which says continuous specific reference to the earlier filed application.

[00:19:31] Speaker 02:
Right.

[00:19:35] Speaker 02:
Yes.

[00:19:42] Speaker 02:
I'm sorry.

[00:19:43] Speaker 02:
I'm not sure.

[00:19:43] Speaker 05:
I think the point is that the question of whether we even have to get to the interpretation of the regulations

[00:19:50] Speaker 05:
given the clarity of the statute and the specific references that's required by the statute, which seems to me to be a different form of language than appears in 112.

[00:20:01] Speaker 02:
I think that's correct.

[00:20:03] Speaker 02:
120 specifically lays out that the specification must be amended to contain this specific reference.

[00:20:18] Speaker 02:
It's the office position that 120 is its own, that we can't redefine that statute.

[00:20:25] Speaker 02:
The agency has to follow that statute and has, through its regulation 1.78, to be very clear that that specific branch must be the serial number and the relationship of the applications.

[00:20:37] Speaker 02:
Okay.

[00:20:38] Speaker 02:
Thank you.

[00:20:39] Speaker 05:
Thank you.

[00:20:40] Speaker 05:
Mr. Geiser, you've got a little over two minutes.

[00:20:42] Speaker 05:
Oh, I'm sorry.

[00:20:43] Speaker 05:
Mr. Rosado first.

[00:20:53] Speaker 01:
Thank you, and may it please the court.

[00:20:57] Speaker 01:
E-Trade is in agreement with the director's argument here that the board's decision on the priority issue should be affirmed.

[00:21:04] Speaker 01:
And we agree with the director in the sense that the statute is very clear on this point.

[00:21:09] Speaker 01:
The corresponding regulation is very clear.

[00:21:12] Speaker 01:
And this court's guidance is very clear.

[00:21:14] Speaker 01:
Your Honor, you had mentioned the Britannica case.

[00:21:16] Speaker 01:
I would also respectfully direct attention to the Medtronic case, which addressed this issue.

[00:21:21] Speaker 01:
very much on point and explained that Section 120, as well as the corresponding regulation, very specifically requires that specific reference, and that entails an identification of the applications by serial number and by relationship.

[00:21:37] Speaker 01:
So this is something the court's already addressed on this issue.

[00:21:40] Speaker 01:
And it's not necessarily a matter of deference to an agency.

[00:21:43] Speaker 01:
These are things that have been addressed and decided.

[00:21:47] Speaker 01:
On the rule question with regard to section 1.57, I would agree with what I think I'm hearing, and that is that section 120, as well as the corresponding regulation 1.78, imposes a different requirement when it comes to a priority claim.

[00:22:08] Speaker 01:
Rule 1.57 may let you do certain things with respect to 112 support, but that doesn't change the fact that there's a statute and a corresponding regulation

[00:22:16] Speaker 01:
that imposes a different requirement when it comes to a priority claim.

[00:22:20] Speaker 01:
And that requirement is a specific reference.

[00:22:23] Speaker 01:
These are very clear requirements.

[00:22:25] Speaker 01:
They're very easy to follow.

[00:22:26] Speaker 01:
They've been in place for decades.

[00:22:29] Speaker 01:
And they serve an important purpose in allowing the public to inspect a patent and understand exactly what the priority claim is and what the corresponding term is.

[00:22:37] Speaker 01:
Those are two very important things for the public to be able to understand.

[00:22:41] Speaker 03:
Assuming we would agree with you on that, and I'm not saying we will, but assuming we were to,

[00:22:46] Speaker 03:
Does that make your cross-appeal moot?

[00:22:49] Speaker 01:
Yes.

[00:22:50] Speaker 03:
Now the problem, though, is does that make what we should do with your cross-appeal moot?

[00:22:56] Speaker 03:
In other words, is the question that the cross-appeal is moot and so therefore we don't address it, or is it that the cross-appeal was inappropriate in the first instance and therefore should be stricken?

[00:23:07] Speaker 03:
Do you still think that question should be resolved?

[00:23:10] Speaker 01:
Well, we try to present as a conditional cross-appeal.

[00:23:13] Speaker 05:
I mean, the issue's only reached in the instance that... Yeah, but we have plenty of authority saying that you can't file a cross-appeal where you're trying to sustain the judgment rather than expand it.

[00:23:25] Speaker 05:
And that's the situation, isn't it?

[00:23:27] Speaker 01:
Understood.

[00:23:28] Speaker 01:
And that is an open question in some ways.

[00:23:33] Speaker 01:
We do recognize the court's guidance in the district court context.

[00:23:37] Speaker 01:
regarding whether to take the vehicle of a cross-appeal or an alternate basis.

[00:23:41] Speaker 05:
Why would it be any different in the board context?

[00:23:44] Speaker 01:
Well, because it's an agency situation.

[00:23:45] Speaker 05:
If there's a strict gentry application, then there's a question of whether... I'm not aware in the agency context of any authority of greater appeal rights where you're just challenging the rejection of an alternative ground to reach the same result.

[00:24:06] Speaker 05:
Do you have any authority that that should be different than the district court?

[00:24:10] Speaker 01:
I mean, other than the court's discussion of the Chenery doctrine application, I don't have any specific authority that states one way or the other whether it should take the vehicle.

[00:24:19] Speaker 05:
Well, Chenery says you can't address an issue which isn't resolved by the agency, but this issue was resolved by the agency, right?

[00:24:28] Speaker 01:
The issue of unpatentability, but there are also two

[00:24:33] Speaker 01:
different rationales that the agency advances.

[00:24:35] Speaker 01:
One is on the basis of this ground that involved the PCT application.

[00:24:41] Speaker 03:
But why isn't that just an alternative ground to affirm the agency's ultimate judgment?

[00:24:47] Speaker 03:
It very well may be, and we try to be candid in the briefing that... Is it your position that you think this dissatisfied-with language in the AIA somehow broadens the scope of appeal rights?

[00:25:01] Speaker 01:
I wouldn't characterize it that way.

[00:25:02] Speaker 01:
It's more of a question of what's the appropriate vehicle if a party in our position that ultimately prevailed on the issue of unpatentability did so on one ground but not the other.

[00:25:16] Speaker 01:
Certainly, we're satisfied with the ultimate outcome, but we disagree with one of the bases.

[00:25:23] Speaker 03:
But haven't we addressed?

[00:25:24] Speaker 03:
I mean, you say it's very clear what we said in the district court context, but we have addressed this in the context of re-exams and other

[00:25:31] Speaker 03:
appeals from the board decisions, haven't we?

[00:25:37] Speaker 01:
I think so.

[00:25:38] Speaker 01:
We didn't see that as providing clear guidance on that point.

[00:25:41] Speaker 01:
I think that... Put it this way.

[00:25:43] Speaker 05:
If there had been no appeal here, main appeal hadn't been brought, you couldn't have filed an appeal from this decision, right?

[00:25:54] Speaker 01:
I think that's correct.

[00:25:55] Speaker 01:
I think there was a decision on that point in NIPR with

[00:25:59] Speaker 01:
with a clean construction issue where the party that ultimately won didn't like some aspect and they advanced that type of argument.

[00:26:07] Speaker 05:
So you can't appeal.

[00:26:09] Speaker 01:
Yes.

[00:26:09] Speaker 04:
If we reversed and sent it back, could you raise those alternative grounds?

[00:26:16] Speaker 01:
And that's another one of the reasons why we advanced it this way.

[00:26:20] Speaker 01:
There is some direction from the board that in cases on remand

[00:26:25] Speaker 01:
that they don't want to consider issues that weren't raised by the party in front of this court.

[00:26:31] Speaker 05:
That says you have to raise the issue.

[00:26:32] Speaker 05:
There's nothing that the board has said about having to file a cross appeal, right?

[00:26:37] Speaker 05:
We agree with that, Your Honor, yeah.

[00:26:39] Speaker 01:
And we've been candid.

[00:26:40] Speaker 01:
We were trying to be cautious here in the event that either the opposing party or even this court tells us, hey, it turns out this is not the appropriate way.

[00:26:52] Speaker 01:
And I think the parties are in agreement that there was an entire clarity, and this wasn't meant to be any type of inappropriate vehicle.

[00:27:02] Speaker 01:
It's just to be very clear what we're trying to do and that this wasn't a resolved question.

[00:27:08] Speaker 01:
And if there's any necessity of preserving rights, this was the approach taken.

[00:27:17] Speaker 01:
So I just wanted to make one other

[00:27:20] Speaker 01:
point on the priority issue, if it's helpful.

[00:27:23] Speaker 01:
And I'll leave open the discussion to questions.

[00:27:26] Speaker 01:
But one was on the notice issue.

[00:27:29] Speaker 01:
The board does actually discuss at A21 the corrected filing receipt issue.

[00:27:36] Speaker 01:
And I think this is a very important set of facts for this case.

[00:27:40] Speaker 01:
There is this issue of what the directors argued and what we agree with is a very clear statute and corresponding

[00:27:47] Speaker 01:
regulation and Patent Office guidance.

[00:27:50] Speaker 01:
To the extent that's somehow not clear, in this particular case, the Patenter was told multiple, multiple times in a very clear fashion that their priority claim only went one step back to the C38 patent.

[00:28:05] Speaker 01:
And if at any point they wished to correct that or they felt that was an error, they had multiple opportunities to do so over the course of years.

[00:28:13] Speaker 01:
There's a corrected filing receipt, a notice of allowance which identified this limited priority claim, the patent issued with a priority claim that actually is quite clear in column one that it goes one step back to that E3A patent claim, and that's it.

[00:28:31] Speaker 04:
So you're saying, contrary to what your friend on the other side said, that we could go off on an issue of fact on this determination?

[00:28:38] Speaker 01:
I think there's a very important issue of fact here.

[00:28:42] Speaker 01:
could have been addressed during the IPR even.

[00:28:44] Speaker 01:
I mean, there are multiple steps along the way where if there was some perceived error or some unintended priority claim here and something different was desired, there were multiple opportunities throughout the course of the proceedings to address that.

[00:29:02] Speaker 01:
So I don't have anything further on the priority issue unless there are specific questions on that.

[00:29:08] Speaker 05:
OK.

[00:29:10] Speaker 01:
Anything else?

[00:29:12] Speaker 01:
I guess I'll comment very briefly on the cross-appeal issue.

[00:29:16] Speaker 01:
Again, I don't think the court reaches this issue, but to the extent it does, we would ask that the court find that the board erred in its analysis of the Ferris reference as it applies to the claims.

[00:29:30] Speaker 01:
And for two reasons.

[00:29:31] Speaker 01:
One, there is a claim construction issue.

[00:29:34] Speaker 03:
But didn't you agree to that claim construction?

[00:29:36] Speaker 01:
We did, but that's a point of confusion.

[00:29:38] Speaker 01:
If you look at the board's

[00:29:40] Speaker 01:
decision that A32, they specifically note that this was an issue for application of the prior art and declined to provide an express claim construction.

[00:29:52] Speaker 01:
And I think what you're referring to is A53 where the board notes that the parties during the course of the litigation seem to arrive at an agreed upon construction of the term.

[00:30:02] Speaker 01:
And that term was, for this term instructions, was some indication of what to do and that

[00:30:07] Speaker 01:
And the date corresponding data did not have to include executable.

[00:30:12] Speaker 01:
That was an agreeable definition between the parties.

[00:30:15] Speaker 01:
There are two problems with that.

[00:30:16] Speaker 01:
One is what that means for claim construction.

[00:30:20] Speaker 01:
We can't look at the decision and really be clear if the board applied that agreed upon construction or something different.

[00:30:27] Speaker 01:
When you get to the application, there's a disconnect between that construction and the disclosure of the prior art reference.

[00:30:35] Speaker 01:
In other words, there's no reasonable basis to conclude that based on that construction, that the prior art disclosure didn't meet that.

[00:30:44] Speaker 01:
And why the board came to the conclusion is it's indecipherable from the decision.

[00:30:53] Speaker 01:
So it's not clear what construction they applied.

[00:30:55] Speaker 01:
If they applied the adopted construction, there's no basis to find the art didn't apply.

[00:31:02] Speaker 01:
If the art didn't apply,

[00:31:04] Speaker 01:
it's an indication that some other construction may have been applied.

[00:31:07] Speaker 01:
Ultimately, you just can't tell from the final rent decision, and that's one of the fundamental problems.

[00:31:14] Speaker 05:
Okay.

[00:31:14] Speaker 05:
Thank you.

[00:31:15] Speaker 05:
Thank you.

[00:31:16] Speaker 05:
Mr. Geiser.

[00:31:18] Speaker 00:
Thank you, Your Honor.

[00:31:19] Speaker 00:
A few quick points.

[00:31:21] Speaker 00:
First, Section 120 does not foreclose incorporation by reference.

[00:31:25] Speaker 00:
If the document being incorporated provides that specific reference and it satisfies

[00:31:30] Speaker 00:
requirements of the statute that's exactly the same as Section 112.

[00:31:34] Speaker 00:
The government's.

[00:31:36] Speaker 00:
The language of the two statutes is different.

[00:31:38] Speaker 00:
I disagree, Your Honor.

[00:31:39] Speaker 00:
Section 112 says that the specification shall contain a written description in such clear, concise, exact terms.

[00:31:46] Speaker 00:
If you incorporate documents by reference, you can do that even if all that's in the actual specification is saying, I incorporate this other document by reference.

[00:31:55] Speaker 00:
It's still containing.

[00:31:56] Speaker 00:
It's using the same word, contain.

[00:31:58] Speaker 00:
And the question is, what does it contain?

[00:32:00] Speaker 00:
And so I don't think there's any material distinction between those two things.

[00:32:04] Speaker 00:
There's certainly no textual restriction in rule 1.57.

[00:32:07] Speaker 00:
It does not limit on its face any use of incorporation by reference so long as you're incorporating a document that's approved in subsection C or subsection D. But the 838 doesn't have the incorporation language you mean.

[00:32:20] Speaker 03:
You want us to say that even if you incorporate the 838 by reference and it doesn't have the priority language,

[00:32:28] Speaker 03:
that then we're supposed to go back and see whatever the 838 incorporated by reference and keep going back the chain, right?

[00:32:36] Speaker 00:
Our contention is that once we incorporated the 838 patent by reference, and that appears as if it were explicitly written into the text of the 115 patent itself, and it was uncontested below, this is page 14 of the board's decision, that the 838 patent, had it been written, had it been mechanically reproduced in the application, it would have satisfied priority.

[00:32:56] Speaker 00:
So the question is, is there anything in rule one point?

[00:32:57] Speaker 05:
But it wouldn't have under the government's theory, because it too backs the specific reference.

[00:33:03] Speaker 00:
The government is incorrect on that, Your Honor.

[00:33:05] Speaker 00:
First, that was twice forfeited.

[00:33:06] Speaker 00:
It wasn't raised below.

[00:33:07] Speaker 00:
It wasn't raised in the opening brief.

[00:33:09] Speaker 05:
It's not a question of whether it's forfeited.

[00:33:10] Speaker 05:
It's just to address the merits of it.

[00:33:13] Speaker 05:
The language of the 838 is essentially the same, isn't it?

[00:33:17] Speaker 00:
No, Your Honor.

[00:33:18] Speaker 00:
The 838 patent, first of all, the government's contention is that they're focusing on one paragraph of the 838 patent that references the 917 application.

[00:33:27] Speaker 00:
They're ignoring the language in the 838 patent that also references the 745 patent, which is what completes the chain, which is presumably why the board below, and they're pretty good at this, looked at the 838 patent and said it would... No, but the point is that even if someone looked at the 838, that doesn't end the search.

[00:33:44] Speaker 05:
They've got to go beyond that and search

[00:33:46] Speaker 05:
other patents to figure out what the priority is.

[00:33:49] Speaker 00:
No, Your Honor.

[00:33:50] Speaker 00:
The 838 patent itself references the 745 patent in the 917 application completing the chain.

[00:33:56] Speaker 00:
So if you do incorporate the 838 patent by reference and you've satisfied every link of 120 in exactly the kind of particular terms that Section 120 and Rule 1.78 requires.

[00:34:11] Speaker 00:
My last point, if the Court may.

[00:34:14] Speaker 00:
I don't think the government has a good answer for how this is different than Section 112.

[00:34:17] Speaker 00:
The government suggested that the difference is that Rule 1.57 lists the requirements of 112.

[00:34:24] Speaker 00:
Of course, if the statutory language precludes the use of incorporation by reference, then it doesn't matter what the regulation lists.

[00:34:31] Speaker 00:
It precludes it.

[00:34:32] Speaker 00:
So the question is, does the rule authorize incorporation by reference?

[00:34:36] Speaker 05:
Okay, I think we're out of time, Mr. Geiser.

[00:34:38] Speaker 00:
Thank you.

[00:34:39] Speaker 00:
Thank you, Your Honor.

[00:34:39] Speaker 00:
Thank all counsels.

[00:34:40] Speaker ?:
Please.