[00:00:00] Speaker 06:
The first two cases we consolidate for purposes of argument and I appreciate the cooperation in that regard.

[00:00:07] Speaker 06:
The cases are 171962 and 171963, natural alternatives versus Yonko.

[00:00:15] Speaker 06:
Mr. Chambers.

[00:00:22] Speaker 02:
May it please the court, I'm Scott Chambers for the Patent Owner.

[00:00:25] Speaker 02:
All parties agree that

[00:00:27] Speaker 02:
The relevant applications to consider in this case are the fourth, fifth, and sixth application.

[00:00:33] Speaker 02:
On August 29, 2008, when the sixth application was filed, it met all three requirements of Section 120.

[00:00:39] Speaker 02:
And 120 says that when the requirements are met and the applicant asks for a priority, that it effectively steps into the shoes or effectively is given the priority back to the date that it's requested.

[00:00:57] Speaker 02:
Now, given the rest of 120, that means that when this application was filed on August 29, 2008, the sixth application was entitled to a priority of August 12, 1997.

[00:01:13] Speaker 02:
In its specification, the application asked for it on August 29.

[00:01:17] Speaker 02:
Now, what the solicitor and the patent owner disagree about is what the change in the fifth application that occurred several days later

[00:01:28] Speaker 06:
It was already, after the... Before the application you're referring to issued, before the patent issued.

[00:01:34] Speaker 02:
The application for six was pending when the change... The application for six was pending, Your Honor, but it had already satisfied all the requirements of Section 120.

[00:01:44] Speaker 02:
And while it was still satisfying all the sections of 120 that are required, and also asking for the priority

[00:01:54] Speaker 02:
A change in another applicant.

[00:01:55] Speaker 06:
So your view is that if there's one point in time in which the criteria are satisfied, even if it's before issuance of the patent, then it's vested.

[00:02:05] Speaker 06:
And why vesting, you mean, that it's irrevocably... Not at all, Your Honor.

[00:02:09] Speaker 06:
No?

[00:02:10] Speaker 02:
Okay.

[00:02:10] Speaker 02:
We don't mean that it's irrevocable.

[00:02:12] Speaker 02:
We understand that an applicant can specifically ask for that to be revoked.

[00:02:18] Speaker 02:
And 120 says that an applicant can do that.

[00:02:22] Speaker 02:
But in fact, if you don't ask for it and you put the public on notice that you are claiming all the way back, something happening in another application has no effect.

[00:02:33] Speaker 02:
In other words, on August 29, when this application, when the sixth application was filed, and when it satisfied all requirements of 120 and asked for that priority, what happened on August 29 was it was effectively filed in 1997.

[00:02:52] Speaker 02:
It was filed, you know, far earlier, and that was something that it claimed and always claimed.

[00:02:59] Speaker 03:
Is it a case that the PTO doesn't even evaluate whether you're actually entitled to priority unless there's some reason it has to?

[00:03:07] Speaker 03:
It just accepts the applicant's claims?

[00:03:10] Speaker 02:
Your Honor, the PTO in the MPEP, which is supposed to be the policy manual for the PTO,

[00:03:17] Speaker 02:
says that the examiner is supposed to look through them.

[00:03:20] Speaker 02:
When I was an examiner, I certainly looked through to see if there was, you know, additional material because I had to look at each claim and I had to decide if there's a CIP, does this claim go all the way back or only part the way back?

[00:03:34] Speaker 01:
But there's no written decision that's required at that point, right?

[00:03:38] Speaker 02:
There is no written aspect of the patent office to say that

[00:03:44] Speaker 02:
this is granted this priority or not.

[00:03:46] Speaker 01:
How do we know it happened or not?

[00:03:50] Speaker 02:
Your Honor, the public is on notice because the applicant asked for this.

[00:03:54] Speaker 02:
In other words, the applicant said, I'm claiming all the way back to 1997.

[00:03:59] Speaker 02:
And then if it needs to be done at a later point, a court can go in and they can say, OK, well, did they have the support for the claims back in 1997?

[00:04:11] Speaker 02:
Because they're claiming they do.

[00:04:12] Speaker 02:
And so a court can do that at that point.

[00:04:16] Speaker 06:
There's no need for... But you're saying that the vesting, the so-called vesting, occurs when the applicant asks?

[00:04:23] Speaker 06:
We're saying that... Is that automatic?

[00:04:24] Speaker 06:
I mean, is that... It's automatic, Your Honor, when... The moment the application is filed and there's an ask, then the... Not at all, Your Honor.

[00:04:34] Speaker 02:
It vests when the criteria of one

[00:04:39] Speaker 02:
20 are satisfied.

[00:04:41] Speaker 06:
As Judge Rayner mentioned, nobody's done that evaluation at that point in time, right?

[00:04:48] Speaker 06:
So what is the point in time?

[00:04:49] Speaker 06:
If it's not when the ask is, it's when what happened.

[00:04:55] Speaker 02:
Your Honor, the examiner or anyone in the public can look at that file and they can tell if on August 29th

[00:05:04] Speaker 02:
Did these claims that later issued satisfy all the criteria of 120?

[00:05:10] Speaker 02:
We do that all the time in the real world, looking at particular patents.

[00:05:15] Speaker 02:
And if that is the case, and if it was requested, that is provided.

[00:05:19] Speaker 03:
But the PTO, the day you file your application, the PTO has, you suggested to me that the MPEP, they're supposed to look to see if there's written description support.

[00:05:28] Speaker 03:
But the day you file your application, they haven't had the opportunity to look yet, right?

[00:05:33] Speaker 02:
They have the opportunity, your honor, to look when it comes up for examination.

[00:05:37] Speaker 02:
And when it comes up for examination, they can look and see.

[00:05:40] Speaker 03:
That's not the day it was filed.

[00:05:45] Speaker 03:
I mean, I think that maybe you have an argument on dusting, but it has to be when the patent issues, because that's the period in time after which all of the relevant criteria will have been examined and validated.

[00:05:55] Speaker 03:
But I'm having trouble with your notion that you're entitled to it on the final date itself.

[00:06:00] Speaker 02:
Your Honor, we're entitled to it as soon as the criteria of 120 are met.

[00:06:06] Speaker 06:
As Judge Lori said... But when are they met?

[00:06:09] Speaker 06:
I mean, I'm just trying to pin it down.

[00:06:10] Speaker 06:
You said it's not the moment that the application is filed.

[00:06:14] Speaker 02:
Your Honor, it is the moment the application is filed and they are met.

[00:06:19] Speaker 02:
In other words... And they were met.

[00:06:20] Speaker 06:
So how do we evaluate whether and they were met?

[00:06:24] Speaker 02:
Your Honor, this happens all the time.

[00:06:28] Speaker 02:
You file an application, and you claim that it's enabled, and then at some later point it gets challenged in district court, and they say, oh, this wasn't enabled.

[00:06:37] Speaker 02:
That's fine.

[00:06:38] Speaker 02:
Until you show that it wasn't enabled, we're going to presume.

[00:06:44] Speaker 06:
But when you file an application, then it goes through examination.

[00:06:47] Speaker 06:
So there's a determination by the examiner as to whether or not it's enabled or not, right?

[00:06:52] Speaker 02:
That is correct when it is examined, but that's long before it issues, yes.

[00:06:59] Speaker 02:
In other words, Your Honor, this is no different than any aspect of law.

[00:07:06] Speaker 02:
When I file a contract, when I make a contract and they're both signed, that contract, even though it's not in front of a district court, it's a valid contract.

[00:07:15] Speaker 03:
that this is this is not something but but you don't have a patent you don't have a patent until it's issued right until it's that is correct your honor but the the way that the solicitor in addition to what I'm sorry I didn't mean to interrupt your question or his answer but I mean in addition to what she just first is saying priority can change after filing and regularly does through amendments or through claim changes right every time an amended claim is filed a new

[00:07:44] Speaker 03:
review has to be conducted and there may or may not be an entitlement to priority going back.

[00:07:50] Speaker 03:
I mean, so I feel as though entitlements to priority change regularly throughout prosecution.

[00:07:58] Speaker 03:
And that's why I'm having trouble with your vesting for everybody on the filing date as opposed to the issuance date.

[00:08:05] Speaker 02:
Your Honor, according to the statute, it is entitled when the criteria of 120 are met.

[00:08:13] Speaker 02:
It doesn't say when it's examined.

[00:08:15] Speaker 02:
It doesn't say when it issues.

[00:08:17] Speaker 02:
It says when the criteria of 120 are met.

[00:08:20] Speaker 03:
OK, wait, time out.

[00:08:21] Speaker 03:
Let me give you a hypothetical.

[00:08:22] Speaker 03:
Suppose that because when the sixth, I can't keep track of all these numbers, when the sixth application was filed, the fifth and the fourth were still pending at that time, I think, or at least the fourth or fifth.

[00:08:36] Speaker 02:
The fifth was, Your Honor.

[00:08:37] Speaker 03:
Still pending.

[00:08:38] Speaker 03:
OK, suppose that after the sixth was filed,

[00:08:43] Speaker 03:
since the fifth was still pending.

[00:08:45] Speaker 03:
Suppose the inventors went in and actually amended the specification, which you can do, and they eliminated weight.

[00:08:52] Speaker 03:
They eliminated material in the specification that would have been necessary to support the priority claim in the sixth application.

[00:08:59] Speaker 02:
They amended it in the fifth?

[00:09:01] Speaker 03:
Yes.

[00:09:02] Speaker 02:
Oh, OK.

[00:09:02] Speaker 02:
That's what I'm asking.

[00:09:03] Speaker 03:
They amended it in the fifth.

[00:09:05] Speaker 03:
They did this after the sixth was filed.

[00:09:07] Speaker 03:
So as of the day the sixth was filed,

[00:09:09] Speaker 03:
it would have been entitled to a priority claim back through the fifth, through the fourth, through the third, all the way back.

[00:09:14] Speaker 03:
But before the sixth issued and before the fifth issued, the fifth application was itself modified so that it no longer provided written description support for the sixth application.

[00:09:25] Speaker 03:
What happens then?

[00:09:26] Speaker 02:
Your Honor, the statute is pretty clear about that.

[00:09:29] Speaker 02:
When the criteria of 120 are met, the application effectively was filed in 1997.

[00:09:38] Speaker 02:
So it was effectively filed in 1997.

[00:09:41] Speaker 03:
So you're saying they get that claim of priority even though the fifth application no longer contains written description support?

[00:09:48] Speaker 02:
If they already were entitled to it and already requested it, absolutely, Your Honor.

[00:09:54] Speaker 03:
How is the public on notice of that?

[00:09:58] Speaker 03:
How does that provide adequate public notice?

[00:10:02] Speaker 03:
If the sixth claims priority of the fifth, and it's clear the fifth doesn't disclose some of the things in the sixth application, is the public required then to go back through the prosecution history and figure out it used to be there, but it's not there anymore?

[00:10:13] Speaker 02:
You are correct, Your Honor.

[00:10:15] Speaker 02:
And this Court has many times said that a review of a patent that does not consider the prosecution history is not competent.

[00:10:24] Speaker 02:
And they have refused to embrace

[00:10:27] Speaker 02:
opinions of counsel where someone didn't look at the prosecutions of course you have to to look at it and that's what's required of the statute because it says when you file it you meet these criteria and as this court said in the you know i'm sorry i'm sorry okay i i i will i will certainly attempt to control it when you are uh... filing the application once you've satisfied

[00:10:56] Speaker 02:
the criteria of 120, this Court has said that the application shall, without exception, receive the benefit of the filing date.

[00:11:04] Speaker 02:
That means that when this was filed in 2008, that it was effectively filed that had the same effect as if it had been filed in 1997.

[00:11:19] Speaker 02:
So that when the fifth application came along later and was filed in 2003,

[00:11:26] Speaker 02:
Well, at that point, it was already on file for six years.

[00:11:30] Speaker 02:
How could the fifth application, an entirely different application, have any effect on it?

[00:11:35] Speaker 02:
I mean, even the NPEP says it affects the instant application.

[00:11:41] Speaker 02:
It doesn't say it affects all applications in the claim.

[00:11:45] Speaker 02:
And when you look at what the statute 120 says, you find that it does not go back in time.

[00:11:55] Speaker 02:
amendment occurred 11 years later so that this 11 years after 1997 according to 120 when this was filed it effectively was filed in 1997 and then 11 years later somebody changes an entirely different application and that entirely different application said I'm changing the priority of this application but there is no evidence whatsoever that the six application was changed

[00:12:25] Speaker 02:
And you're saying, OK, it goes back in time 11 years.

[00:12:28] Speaker 01:
So what are the negative consequences if we were to adopt the PTO position?

[00:12:33] Speaker 02:
Well, Your Honor, as our brief lays out, there are at least three.

[00:12:39] Speaker 02:
Let me go through them.

[00:12:40] Speaker 02:
The first is that the solicitor's position means that you could never sell an application if you have a daughter application.

[00:12:48] Speaker 02:
That's because the buyer could defeat the sale of the daughter application

[00:12:55] Speaker 02:
And putting up roadblocks to sales and alienability is not in the best interest of the patent system.

[00:13:01] Speaker 02:
So you would have a problem with you can't sell any intermediate application because they might, you know, disclaim priority.

[00:13:10] Speaker 03:
Sure you can.

[00:13:11] Speaker 03:
You sell it, but you put a condition in the contract, right, that says you can't change the priority claim.

[00:13:17] Speaker 03:
It seems like a very easily avoidable problem.

[00:13:19] Speaker 02:
You know, Your Honor, you can put that into the contract.

[00:13:22] Speaker 02:
And if they abide by the contract, you're in reasonably good shape.

[00:13:27] Speaker 02:
But the problem with that is that suppose they don't abide.

[00:13:31] Speaker 02:
Oh, now all of a sudden I'm going to go sue.

[00:13:33] Speaker 06:
Well, we can't use public policy to contend with or to take into account if there are violations of the rules or of the contract.

[00:13:40] Speaker 06:
That's a little...

[00:13:40] Speaker 02:
Your Honor, I think the statute as it's set takes care of that.

[00:13:45] Speaker 02:
But the other problem that you have is that suppose you file an application and then you file a CIP and that the examiner immediately says, oh, these claims with the new material in the CIP, they are claims that we're going to embrace, that I'm going to say that these are patentable because they have the new material.

[00:14:10] Speaker 02:
Well, normally in patent prosecution, at that point you would say, oh, okay, I'm going to take this issuance and I'm going to be able to show that I have a patent, and I will file a continuation and go after the subject matter that goes all the way back, because I still want that.

[00:14:31] Speaker 02:
I just don't want to hold up the entire set of claims in the Patent Office

[00:14:38] Speaker 02:
for, you know, until it goes through the court and I have to appeal it.

[00:14:44] Speaker 02:
So you can take your claim to the CIP and you can disclaim the unneeded priority and you could get the longer term that the 1995 Act promises you.

[00:14:59] Speaker 02:
and then you can continue because you've already filed an established priority as 120 says you've effectively gone to that earlier date then you can file and and seek claims to that broad subject matter so that's the second reason that this seems like you just got to saying that that uh... it is revocable but it's revocable when you claim it in that application the solicitor's office has has

[00:15:28] Speaker 01:
Distorted what we said due to your argument about vesting.

[00:15:32] Speaker 01:
Your honor.

[00:15:32] Speaker 01:
If it vests, then it vests to all parties for all purposes.

[00:15:36] Speaker 02:
Not for all time, though.

[00:15:38] Speaker 02:
It vests.

[00:15:38] Speaker 02:
Why not for all time?

[00:15:40] Speaker 02:
Because the 120 says you can disclaim it.

[00:15:45] Speaker 01:
So that you can definitely disclaim it.

[00:15:47] Speaker 01:
And we know you can disclaim it.

[00:15:49] Speaker 01:
So what are the other negative consequences?

[00:15:51] Speaker 01:
You've given us one.

[00:15:53] Speaker 02:
OK.

[00:15:54] Speaker 02:
I thought that was too, but, you know, the other negative consequence would be that the Patent Office, when we look at the other criteria of 120, as laid out in the Kuhnen Declaration and laid out in our briefs, appendix, you know, 1250 through 1260, talks about the fact that this nunc protunque aspect is already been decided by the Patent and Trademark Office.

[00:16:24] Speaker 02:
in terms of inventorship.

[00:16:28] Speaker 02:
So if two people, Inventor A and Inventor B, they file an application and the one has invented a widget and the other one has invented a carburetor.

[00:16:40] Speaker 02:
It goes in, it gets filed.

[00:16:42] Speaker 02:
At some later point, they get allowance of the carburetor and you can't have both inventors on

[00:16:52] Speaker 02:
the patent to the carburetor because inventor B invented one part and inventor A invented the other.

[00:17:01] Speaker 02:
What happens at that point is that you file an application and you say I'm filing an application just to go after the widget and that now I have two applications.

[00:17:16] Speaker 02:
They're both claiming the same priority date.

[00:17:18] Speaker 02:
They've effectively been claiming the same priority date.

[00:17:21] Speaker 02:
Now I cancel

[00:17:22] Speaker 02:
the inventorship in the first one so that it no longer says A and B, it only says, say, A, and then the other one now says B. If this goes back in time, that means that as soon as they cancel the inventorship, gee, it goes back in time.

[00:17:38] Speaker 02:
And all of a sudden, I don't have co-inventorship.

[00:17:42] Speaker 02:
I'm not satisfying 120.

[00:17:44] Speaker 02:
In addition, there is a problem with

[00:17:51] Speaker 02:
It talks about pendency.

[00:17:54] Speaker 02:
Okay, so the applicants have to be, the applications have to be co-pending.

[00:17:59] Speaker 02:
Well, wait a minute.

[00:18:00] Speaker 02:
As soon as one is abandoned, now they're not co-pending.

[00:18:04] Speaker 02:
If this goes back in time, that messes that up too.

[00:18:07] Speaker 02:
So it's two aspects of 120 say, you don't go back in time.

[00:18:12] Speaker 02:
And yet we're talking about this other aspect and saying, well, it should.

[00:18:17] Speaker 02:
The final point of 120 is talking about 112.

[00:18:21] Speaker 02:
And this court has already said in Hogan that in terms of satisfaction at 112, that's determined at the filing date.

[00:18:29] Speaker 01:
Does it matter that the cancellation with respect to the inventorship is involuntary, whereas what we're looking at here, the cancellation of a priority claim

[00:18:42] Speaker 02:
Not at all, Your Honor.

[00:18:45] Speaker 02:
In the Kuhnen Declaration, it's at 120, it says, suppose then the Patent Office declaims a restriction.

[00:18:51] Speaker 02:
Okay, suppose they didn't.

[00:18:53] Speaker 01:
It doesn't matter because... You do agree that inventorship is involuntary.

[00:18:58] Speaker 01:
And what we're looking here in this case is a voluntary cancellation of the priority claim.

[00:19:04] Speaker 02:
I would say that inventorship is involuntary, but you could have filed the application and not had separate patents unless it was restricted.

[00:19:14] Speaker 02:
But it might not be restricted.

[00:19:18] Speaker 02:
So in the case you're describing, in the case in that declaration, it was part of a restriction requirement.

[00:19:25] Speaker 02:
But there's no reason to because you could also have the same exact scenario where

[00:19:30] Speaker 02:
A and B file something, and then you file a continuation with just B, and then you cancel B's inventorship on the first one.

[00:19:39] Speaker 02:
So it doesn't have to be required by the Patent and Trademark Office.

[00:19:43] Speaker 02:
It could be that, well, I decided, because I needed to get these claims out, somebody's infringing, I went after the claim of Mr. Inventor A first, and I can go after the claims of Mr. Inventor B at a later point.

[00:19:59] Speaker 05:
OK, you've well dug into your rebuttal time.

[00:20:03] Speaker 05:
We still have a couple minutes.

[00:20:04] Speaker 05:
Let's hear from the governor.

[00:20:05] Speaker 02:
Thank you, Your Honor.

[00:20:12] Speaker 00:
Good morning, Your Honors.

[00:20:13] Speaker 00:
May it please the court?

[00:20:15] Speaker 00:
I'd like to begin by addressing something that my friend across the aisle said.

[00:20:20] Speaker 00:
He seemed to suggest that the MPEP and the examiner somehow certified a benefit claim on the date that the benefit claim is made.

[00:20:30] Speaker 00:
In fact, that is not true.

[00:20:32] Speaker 00:
The examiner will look to a benefit claim statement to make sure that it correctly lists the dates of any prior applications and serial numbers and whatnot to meet the basic formalities, but to guarantee entitlement to priority, even the MPEP section 216 provides that the subject matter of the application is not examined to determine whether the applicant

[00:20:59] Speaker 00:
is actually entitled to the benefit of the foreign or domestic filing date?

[00:21:04] Speaker 06:
Why can't it be?

[00:21:05] Speaker 06:
I mean, just as a policy matter, just as if that makes sense.

[00:21:08] Speaker 06:
You're right.

[00:21:08] Speaker 06:
So the determination is made somewhere down the road, the evaluation.

[00:21:12] Speaker 06:
But why can't that be backdated?

[00:21:15] Speaker 06:
Sort of like in a lot of other scenarios, that if you file something and if it turns out that all the certifications you've made at the filing were accurate, even if that's at a later time,

[00:21:24] Speaker 06:
you can go back to the filing date to be entitled.

[00:21:27] Speaker 06:
That happens in the veterans cases where you go back to the filing with the claim, et cetera.

[00:21:31] Speaker 06:
So what's the problem with that?

[00:21:32] Speaker 00:
Well, I was addressing what counsel has said, but there is no problem.

[00:21:37] Speaker 00:
You're correct.

[00:21:38] Speaker 00:
In fact, that's exactly what section 120 says, is that if it is right and somebody goes back and checks it later, it's all treated

[00:21:48] Speaker 00:
as if the effective filing date was of the first.

[00:21:51] Speaker 06:
So why, I mean, let me just segue to another point that was raised in some of Judge Moore's questions, which is the office's view that if the sixth application had issued as a patent before all of this other stuff happened, then he would be entitled?

[00:22:08] Speaker 06:
No.

[00:22:08] Speaker 06:
To the back date.

[00:22:10] Speaker 06:
So you don't think the distinction to be drawn here is whether it was just an application or whether or not a patent had actually issued?

[00:22:18] Speaker 00:
I don't think, as a general matter, that's correct under this court's precedent in Encyclopedia Britannica and in Medtronic, but I also don't think it's what the correct result would be in this particular case, because... Well, in this case, it wasn't the case.

[00:22:37] Speaker 04:
That's a hypothetical.

[00:22:38] Speaker 04:
That's not this case, where the application that Patton had issued before the fifth application.

[00:22:44] Speaker 00:
I'm sorry.

[00:22:44] Speaker 00:
Even if that had happened in this case,

[00:22:47] Speaker 00:
there was something that happened during the prosecution of the sixth application that would indicate that that is incorrect.

[00:22:54] Speaker 00:
And what that was was, I'm going to step back and give some background for a second, if I might.

[00:23:02] Speaker 00:
The attorney who filed and prosecuted the fourth, fifth, and sixth application, and she also filed the seventh application, but the prosecution of that application and the filing of the prosecution of the eighth application were done by different attorneys.

[00:23:17] Speaker 00:
So we have the same attorney, the attorney who amended the benefit claim in the fifth application.

[00:23:23] Speaker 00:
The examiner during the prosecution of the sixth application issued an obviousness type double patented rejection against the sixth application, citing applications one through five.

[00:23:40] Speaker 00:
So all of the applications in the series.

[00:23:43] Speaker 00:
And important to what happened next is to know

[00:23:47] Speaker 00:
that the specification in the one through four application is shorter than the specification in the fifth application and onward, which includes different experimental data, et cetera.

[00:23:59] Speaker 06:
Is the specification the same for five and six?

[00:24:03] Speaker 00:
Yeah, the specification is the same for five, six, seven, and eight.

[00:24:07] Speaker 00:
So anyway, when she was faced with this ODP rejection, she filed 35 pages of response

[00:24:13] Speaker 00:
explaining how the invention claimed in the sixth application was patentably distinct.

[00:24:20] Speaker 00:
In other words, not supported by 112 by applications one through four, and she filed a determined disclaimer over the patent that would eventually issue from application number five.

[00:24:34] Speaker 00:
So at least the, and this is the only contemporary evidence we have

[00:24:39] Speaker 00:
of intent in what was really going on here.

[00:24:41] Speaker 00:
At least the attorney who handled the prosecution of the fifth and the sixth application believed that applications one through four did not support the claims in the sixth application.

[00:24:52] Speaker 00:
And so for that reason, that's an additional reason that supporting our claim here and now that there isn't 112 support as required by section 120 for the claims in the sixth application and

[00:25:09] Speaker 00:
although not examined for that sort of support in the seventh and eighth, but at least the attorney, the contemporaneous writings, evidence that at least, even if we had your hypothetical, it still wouldn't, where, you know, the sixth application issued before.

[00:25:27] Speaker 06:
Okay, no, my hypothetical was really a hypothetical.

[00:25:29] Speaker 06:
I mean, there could be other circumstances, as you described, that may result in a different change.

[00:25:33] Speaker 06:
I was just asking about the legal proposition.

[00:25:37] Speaker 06:
I mean, if we were to write an opinion here, would the government have us sort of go so broad as to say, not just if the five is changed when six is still pending, but even if six is issued under 120, it could still be changed at that time?

[00:25:58] Speaker 00:
I believe that would be the correct result.

[00:26:01] Speaker 00:
However, you don't need to go that far to resolve this case, but I do believe

[00:26:06] Speaker 00:
looking at the opinions in Encyclopedia Britannica and in Medtronic that that would be, and the court's interpretation of Section 120, I believe that would be the correct result.

[00:26:17] Speaker 00:
But again, you don't need to go that far to resolve this case.

[00:26:19] Speaker 06:
Okay, so your friend makes the argument about kind of a plain-meaning argument of Section 120.

[00:26:26] Speaker 06:
Is it your view that there's

[00:26:29] Speaker 06:
It's not clear that there's enough ambiguity sort of baked into this language so that it's up to us.

[00:26:36] Speaker 06:
Let's forget any Chevron deference.

[00:26:39] Speaker 06:
But it's up to us to do it.

[00:26:41] Speaker 06:
Or is it your view?

[00:26:42] Speaker 06:
I mean, what is your view on the language?

[00:26:43] Speaker 06:
You can't be arguing that the language is clear and it says no, answers no to his question, right?

[00:26:50] Speaker 00:
Well, I think this court already answered that question in Encyclopedia Britannica.

[00:26:55] Speaker 00:
where it was a case of first, the court said this was a case of first impression and the court would have to interpret the statute.

[00:27:03] Speaker 00:
And so to me that indicates that at least this court doesn't believe the statute is clear and I don't have authority to say whether the agency thinks that the statute is clear or not, but certainly we don't disagree with this court's precedence that the statute is open to interpretation.

[00:27:25] Speaker 00:
Does that answer your question?

[00:27:26] Speaker 00:
Yes.

[00:27:27] Speaker 00:
Thank you.

[00:27:29] Speaker 00:
Thank you.

[00:27:31] Speaker 00:
Are there any other questions?

[00:27:35] Speaker 00:
Then I thank you for your time, and we ask that this court affirm.

[00:27:38] Speaker 00:
Thank you.

[00:27:39] Speaker 00:
Thank you.

[00:27:43] Speaker 02:
Your Honor, I'd like to correct one issue that Miss Kelly suggested, that there was an argument regarding the six application not having support

[00:27:54] Speaker 02:
in the fourth through the first, that issue

[00:27:58] Speaker 02:
regarding the sixth was not raised.

[00:28:02] Speaker 02:
What she is saying is true for the fifth application, but this was not part of the record, and it was never raised.

[00:28:11] Speaker 02:
If it was an issue, it should have been raised.

[00:28:13] Speaker 02:
But more importantly, she's arguing a point on 112 for the fifth application that was not at issue, as stated by the PTAB.

[00:28:22] Speaker 02:
So all of her discussion about how the sixth application wasn't supported

[00:28:27] Speaker 02:
was really that the fifth application was not supported.

[00:28:31] Speaker 02:
And if you'll look at footnote two of the solicitor's brief, that'll become clear because she says they added glycine.

[00:28:38] Speaker 02:
Well, the claims in the fifth application that deal and embrace glycine with this substance, you know, that wasn't part of the original filing.

[00:28:47] Speaker 02:
So let's look at some of those other issues that

[00:28:50] Speaker 02:
we want to touch on.

[00:28:51] Speaker 02:
The legal definition of entitlement, which is what is used by the statute, treats that entitlement to be granted immediately upon meeting the legal requirements.

[00:29:01] Speaker 02:
There's no need for some examination.

[00:29:03] Speaker 02:
Our reply brief covers this in pages 10 to 13 where it quotes Black's Law Dictionary and says what entitlement means.

[00:29:10] Speaker 02:
It is something that

[00:29:12] Speaker 02:
it's given to you and somebody can challenge it later on but it's given to you

[00:29:21] Speaker 01:
It's a placeholder when you follow your application.

[00:29:24] Speaker 01:
And you're given, you're entitled to rely on that placeholder.

[00:29:29] Speaker 01:
And other people that the public that looks at that are entitled to rely on that placeholder.

[00:29:35] Speaker 01:
It's not proven at that point.

[00:29:36] Speaker 01:
I mean, you can challenge that later.

[00:29:39] Speaker 01:
And you cannot, in a later court case, say, look, this has already been determined.

[00:29:45] Speaker 01:
You cannot find that I can't claim priority to the earlier

[00:29:49] Speaker 02:
You are correct, and the same is true for entitlement, the same is true for 103 obviousness, and the same is true for 102.

[00:29:57] Speaker 01:
You can only... So we have entitlement, but you're already doing vesting.

[00:30:00] Speaker 01:
And vesting is not in the statute.

[00:30:02] Speaker 02:
Your Honor, if that was what was taken, it was inarticulate at our part.

[00:30:10] Speaker 02:
When you look at the reply brief, it's quite clear that we don't mean vested forever.

[00:30:14] Speaker 02:
You could always discount it.

[00:30:17] Speaker 02:
You could always get rid of the six application.

[00:30:19] Speaker 02:
If you said in the six application, we no longer claim priority.

[00:30:23] Speaker 02:
The sixth application was effectively filed more than 11 years before this change came.

[00:30:30] Speaker 02:
And more than 11 years, it's better to follow Judge Laurie's, when he was speaking for this court, the idea that once the criteria of 120 are met, the applicant shall, without exception, receive the benefit.

[00:30:45] Speaker 02:
You effectively step into those shoes.

[00:30:48] Speaker 02:
Now, in terms of your question,

[00:30:51] Speaker 02:
Judge Prost, regarding, you know, what if a patent already issued?

[00:30:56] Speaker 02:
And the PTO's position that, well, if the patent had already issued, it would still be a problem.

[00:31:02] Speaker 02:
Well, if that's the case, what that really means is that there's a new way to extend your term.

[00:31:11] Speaker 02:
Even if your patent issues and you've got a license and everything like that until the end of the term,

[00:31:16] Speaker 02:
you can just take one of those intermediates and you can kill the priority, and once you kill the priority, your new patent goes all the way back.

[00:31:27] Speaker 02:
I mean, that's just not a good economic system.

[00:31:37] Speaker 05:
I'm sorry.

[00:31:38] Speaker 05:
If you have one final quick point.

[00:31:40] Speaker 02:
Your Honor, there's no requirement that all the intermediate applications forever and always retain the same claim priority.

[00:31:48] Speaker 02:
Thank you.

[00:31:49] Speaker 06:
We thank both sides.

[00:31:50] Speaker 06:
The case is submitted.