[00:00:01] Speaker 02: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:05] Speaker 02: God save the United States and this honorable court. [00:00:10] Speaker 03: We will hear argument in number 181036, Sabella against Princeton Pharmaceuticals and Mr. Fleming. [00:00:22] Speaker 04: Good morning and may it please the court, Mark Fleming on behalf of Sabella. [00:00:26] Speaker 04: This appeal is unusual. [00:00:28] Speaker 04: In a case coming from a circuit that followed the second restatement of judgments, it wouldn't have been needed at all. [00:00:33] Speaker 04: But the Third Circuit, where this case originates, follows the first restatement of judgments from 1942. [00:00:40] Speaker 04: And that rule, as the Fifth Circuit explained in the Hicks case, forces a losing litigant to take an appeal it knows it will lose [00:00:47] Speaker 04: on the basis of one alternative ground. [00:00:49] Speaker 04: Now, the inefficiency of requiring an appeal like this one was one of the reasons that the American Law Institute did away with that rule in the Second Restatement, but the Third Circuit has stuck with it. [00:01:00] Speaker 04: That means that the district court's findings of lack of utility and written description, which we believe are legally erroneous, are in the Third Circuit potentially considered material to the judgment, even though the judgment is supported by the independent obviousness finding. [00:01:14] Speaker 04: While we are content to let the obviousness finding stand, [00:01:17] Speaker 04: We are not, as to the other grounds. [00:01:19] Speaker 04: And that's because the 237 patent, which is an issue in the follow-on litigation, is not obvious, but it does share a common specification. [00:01:27] Speaker 03: Mr. Fleming, this is just Toronto. [00:01:30] Speaker 03: Can I just ask this? [00:01:31] Speaker 03: Is it right that the only asserted concrete potential harm from the district court decision, now that you are conceding 103 in validity, is that Princeton [00:01:47] Speaker 03: might assert issue preclusion from the 101 and 112 rulings. [00:01:52] Speaker 03: I don't remember whether you made an argument that some third party might invoke issue preclusion. [00:02:02] Speaker 04: We have no reason, we don't know of any third party other than the ones in this case, Your Honor. [00:02:08] Speaker 04: I suppose that is theoretically possible if another generic wanted to launch a generic version of Brizdel. [00:02:15] Speaker 04: that we would be in that situation. [00:02:18] Speaker 04: As I stand here today, I don't know of such a situation. [00:02:21] Speaker 04: But we certainly think that Princeton's stated claim, which it's made clear to the district court, that it will move for judgment on the pleadings in the case involving the 237 patent on the basis of issue preclusion is ample for this purpose and made it necessary, in fact, for us to file this appeal in order to preserve our right to challenge the utility and written description holdings. [00:02:46] Speaker 03: I'm not quite sure whether Princeton says this, but if it were considered that the district court's pronouncements about 101 and 112 here are moots in light of your acceptance of the 103 invalidity, wouldn't the following statement from the Third Circuit's decision in recombustion engineering [00:03:14] Speaker 03: eliminate the collateral estoppel effect. [00:03:17] Speaker 03: It said there, a ruling or finding on a moot issue can have no precedential or collateral estoppel effect. [00:03:27] Speaker 04: I must confess, Your Honor, I haven't read that decision. [00:03:29] Speaker 04: I don't think any of the parties have cited it, but if that is in fact the position of the Third Circuit, I think, I think, and I think it's the position of this Court and the Supreme Court as well, that if this Court says, [00:03:41] Speaker 04: that the utility and written description points are not being reached for one reason or another, then they do not have collateral estoppel effect. [00:03:51] Speaker 04: I think that's correct. [00:03:53] Speaker 04: And so if this court were to issue a short procuring opinion that says we affirm on the uncontested ground of obviousness that makes utility and written description moot, we think it is correct that those two grounds would not have [00:04:08] Speaker 04: collateral estoppel effect. [00:04:10] Speaker 04: I can read the decision your honor just cited and follow up with a letter, but I believe that statement is consistent with what the Supreme Court said in James v. Stevens, what this court said in Masco, and other decisions. [00:04:23] Speaker 03: And one final question for me. [00:04:26] Speaker 03: The language that the district court here used with respect to 101 and 112 is perhaps unusual, and I guess that's [00:04:37] Speaker 03: going to be my question of just how unusual it is. [00:04:39] Speaker 03: That is, most at least alternative holding decisions say, I rule on ground X, I also rule on ground Y. Are you aware of cases in which a court has treated an alternative holding when phrased in the form of [00:05:01] Speaker 03: If I didn't decide X, I would decide Y, which I think is the form of the language at issue here. [00:05:10] Speaker 04: You're absolutely right, Judge Tronda. [00:05:11] Speaker 04: That is the form that was used. [00:05:12] Speaker 04: We haven't encountered another case like this. [00:05:15] Speaker 04: I don't think either party has. [00:05:17] Speaker 04: At least Princeton hasn't cited one that I know of. [00:05:20] Speaker 04: There is the oddity of footnote 32 on page 60 of the appendix where the district court seems to disclaim some kind of, if not one, then the other approach. [00:05:31] Speaker 04: I would say, I guess, if this court were to read the opinion to say that if obviousness is affirmed, then there is no judgment or no decision of utility or lack of written description, then maybe that would solve the problem as well because then there would be no decision to be preclusive. [00:05:52] Speaker 04: But in that case, we think this court should say that it reads the opinion that way in order to give the district court and the party's guidance in the subsequent case, because obviously Princeton does not read the opinion that way. [00:06:02] Speaker 04: I think Princeton reads the opinion as having three alternative grounds, all of which are preclusive. [00:06:07] Speaker 04: And that's going to be a strategy in the next case, failing some guidance from this court. [00:06:11] Speaker 03: Well, Princeton's brief did describe both rulings in its headings as holdings. [00:06:17] Speaker 04: Yes. [00:06:18] Speaker 04: And that's why we're here, Your Honor, because we didn't want to get to a situation where if we didn't appeal in this case and then went through the second case and were found to have been precluded, that this court might have said, well, you should have appealed the first time when you had the chance. [00:06:31] Speaker 04: But we recognize the oddity of the posture and the inefficiency of it. [00:06:35] Speaker 04: It seems to be simply how the first restatement envisions parties dealing with the problem of issue preclusion with alternative basis for judgment. [00:06:44] Speaker 04: This court may not find the first restatement particularly compelling on that point. [00:06:47] Speaker 04: We certainly don't. [00:06:49] Speaker 04: But it's a situation where we think we're stuck with the implications of the regional circuits law here. [00:06:55] Speaker 04: I would like to just address Princeton's suggestion, which they make repeatedly. [00:07:00] Speaker 00: Mr. Fleming, this is Judge Stoll. [00:07:02] Speaker 00: Good morning. [00:07:02] Speaker 00: Could I ask you two quick questions? [00:07:04] Speaker 00: Good morning. [00:07:05] Speaker 00: My quick questions are, first, [00:07:09] Speaker 00: Do you have any cases that support the idea that potential preclusion in a subsequent decision can be sufficient to create a case or controversy? [00:07:20] Speaker 04: I mean, I don't think we need to advocate for that broader proposition. [00:07:25] Speaker 04: I mean, we clearly have standing to appeal the judgment. [00:07:27] Speaker 04: Two of our patents have been invalidated. [00:07:29] Speaker 04: So there is no question that we have standing to invoke this court's jurisdiction. [00:07:35] Speaker 04: How the briefing then plays out, what issues we believe need to be raised and should be raised, is something that I don't think affects jurisdiction. [00:07:44] Speaker 04: It affects how this court will ultimately resolve the case. [00:07:48] Speaker 04: And that's what the 11th Circuit did in the Kahn case, where similarly to here, the appellant challenged one of the bases of decision supporting the judgment, but not the other. [00:07:58] Speaker 04: The same thing has happened. [00:07:59] Speaker 00: The difference in Kahn though, right, isn't that Kahn was challenging a decision [00:08:04] Speaker 00: of which it's lost, here you've lost but you're seeking summary affirmance of a ground on which you lost. [00:08:11] Speaker 00: So it's a little bit different. [00:08:13] Speaker 00: And so let me ask you this. [00:08:16] Speaker 00: Do you have cases to support the idea that a party that lost can seek summary affirmance on a ground on which it lost when both parties, there's no dispute with doing the parties as to that ground? [00:08:28] Speaker 00: Is there a case or controversy in that circumstance? [00:08:31] Speaker 04: I think there is for the same reasons as in Cannes and San Francisco Patrol. [00:08:37] Speaker 04: I mean, we are trying to be candid with the court as to what we think the right answer is. [00:08:40] Speaker 04: I mean, we could just as easily have written a brief that remained silent and said, please reverse on obviousness and said, please reverse on utility and written description. [00:08:50] Speaker 04: And it would have been exactly the same posture as Cannes and San Francisco. [00:08:54] Speaker 04: and San Francisco Patrol. [00:08:55] Speaker 04: We thought that might not have been useful to the court, so we went the further step and said, because we're doing this, here's what we think the right answer is, which is the same answer as in Cannes and San Francisco Patrol, which is to affirm on the uncontested ground, leave the other two unaddressed, and make clear that issue of preclusion doesn't apply to those other two. [00:09:12] Speaker 04: But I think the fact that we've done our best to make this as easy as possible [00:09:18] Speaker 04: doesn't change the standing. [00:09:21] Speaker 04: We are aggrieved by the judgment. [00:09:23] Speaker 04: We have a timely notice and appeal of the judgment. [00:09:27] Speaker 04: It's simply that in briefing the bases, it makes clear that the correct outcome here is an affirmance on the uncontested ground. [00:09:36] Speaker 04: But I don't think that changes the standing, because there is a case or controversy among the parties as to the validity of the judgment and the effect of the judgment. [00:09:46] Speaker 01: Mr. Fleming, this is Judge Chen. [00:09:48] Speaker 01: Just so I understand, what if the district court opinion had stopped at page 59 and so the opinion had only spoken and commented about section 103 and invalidated the patent on that ground and then you appealed that and asked for a summary affirmance of the invalidity of your patents based on section 103? [00:10:12] Speaker 01: Would you agree that we shouldn't do a summary affirmance there? [00:10:16] Speaker 04: I'm not sure. [00:10:17] Speaker 04: I haven't encountered a case like that. [00:10:19] Speaker 04: Obviously, we wouldn't have appealed in that circumstance. [00:10:21] Speaker 04: And that is exactly what would have happened had this case come out of the Fourth Circuit or the Fifth or any other one. [00:10:26] Speaker 01: I think you understand my hypothetical, though. [00:10:31] Speaker 01: And that's all it is. [00:10:32] Speaker 01: Who knows for whatever reason someone wouldn't want to do this? [00:10:36] Speaker 01: The question is, what if the opinion had stopped at page 59 and it only commented about 103? [00:10:46] Speaker 01: Therefore, it only could have invalidated the patents under 103. [00:10:51] Speaker 01: And then you filed an appeal saying, please summarily affirm the district court's decision on 103. [00:11:01] Speaker 01: Would there be, is that appealable? [00:11:05] Speaker 01: Would that be something you would have standing to do? [00:11:08] Speaker 04: I mean, I take it as a hypothetical. [00:11:11] Speaker 04: It's a strange situation. [00:11:13] Speaker 04: And I think, doctrinally, the correct thing to do would be to say, appellant has properly noticed an appeal from the judgment, but has developed no argument for its reversal. [00:11:25] Speaker 04: Therefore, we affirm it. [00:11:27] Speaker 04: I think that would be the right thing to do under all of the cases we've been talking about. [00:11:32] Speaker 04: I don't think there'd be a jurisdictional problem with doing this. [00:11:35] Speaker 03: But why wouldn't the right thing to be done in that situation be to say the appellant has conceded acceptance of the judgment and is therefore not injured by that because it's not claiming an injury from that and there is nothing else that the appellant points to as injury and therefore no Article III [00:12:03] Speaker 03: case or controversy on appeal? [00:12:07] Speaker 04: That might well be all right as well, Judge Toronto. [00:12:10] Speaker 04: I certainly don't mean to die on this Hill. [00:12:12] Speaker 04: It's not something that I've fully considered. [00:12:14] Speaker 04: Obviously, here we are asserting a further consequence, and it is the further consequence that the first and the second restatement have contemplated in this situation. [00:12:24] Speaker 04: And the fact that we need to do this is because the second restatement stated as a reason for doing away with the first restatement rule. [00:12:31] Speaker 04: I'm sorry in many ways that we had to burden the court with this appeal. [00:12:35] Speaker 04: It would have been much easier had the district court clarified that the first ruling did end at page 59, and then we wouldn't have needed this appeal at all. [00:12:42] Speaker 04: But this is where we stand. [00:12:44] Speaker 01: If I could just follow up. [00:12:46] Speaker 01: If the import of what I thought might have been Judge Toronto's point in his question is correct, that there would be no case or controversy under my hypothetical, then [00:13:00] Speaker 01: What if I extended out the hypothetical to be, again, what if the district court opinion stopped at page 59, spoke only about 103, but the appellant, you, misbelieved that there were alternative holdings that also invalidated the patents on other grounds, but there's no earthly reasonable way of reading that district court opinion as actually having made such alternative holdings. [00:13:30] Speaker 01: Wouldn't that also still, under those circumstances, just as with my first hypothetical, be a case or controversy problem with this hypothetical? [00:13:42] Speaker 04: I think the way the court could decide that would be the way it decided the EngVin case, which is to say that the alternative, the supposed alternative grounds were moot, and not least because there was, quote, no reasonable concern about preclusive effect. [00:13:58] Speaker 04: And then once again, affirm on the basis of the uncontested primary ground. [00:14:05] Speaker 04: I think that would be the right way to do it. [00:14:07] Speaker 04: But I recognize these hypotheticals quickly become very difficult because, and not least because there isn't a lot of guidance out there. [00:14:14] Speaker 04: We couldn't find very many cases that arise in this area. [00:14:17] Speaker 04: This isn't a common occurrence. [00:14:19] Speaker 04: It only happens in cases that come out of regional circuits that follow the first restatement in cases where it's difficult. [00:14:28] Speaker 01: Judge Toronto's initial question of the morning, which was, what is your asserted harm here? [00:14:35] Speaker 01: And as I understand it, it's the possibility of issue preclusion. [00:14:41] Speaker 01: And I didn't hear you identify another harm. [00:14:46] Speaker 01: Is there one? [00:14:46] Speaker 04: Well, I think the harm for standing purposes to invoke the jurisdiction of the court is the fact that our patents have been adjudged to be invalid. [00:14:54] Speaker 01: And you've conceded on one ground for purposes of this appeal. [00:14:58] Speaker 04: Yes, that's right. [00:14:59] Speaker 04: And so we think the result is to affirm on that ground on the merits, which this court can do, and state that the other grounds are not being reached. [00:15:08] Speaker 04: It can say that they are moot, as it did in Yingbin, or it can simply say that they aren't reached. [00:15:12] Speaker 04: And therefore, as in the intellectual adventures versus unified patents case from last year, they're not subject to issue preclusion. [00:15:19] Speaker 04: That gives us everything we need, and we can proceed with the follow on case. [00:15:24] Speaker 04: continues and comes back to this court in the second case, then utility and written description could be considered on the merits if they need to be. [00:15:31] Speaker 04: But we think those should remain for another day. [00:15:35] Speaker 03: If my colleagues have no further questions, why don't we hear from Mr. Cunning and I'll restore your rebuttal time. [00:15:45] Speaker 04: Thank you, Your Honor. [00:15:49] Speaker 02: Good morning, Your Honors. [00:15:50] Speaker 02: I'd like to begin with the hypothetical that I believe Judge Chen raised, whether or not the opinion stopped on page 59 and the only issue with obviousness, and the appellant came in [00:16:12] Speaker 02: as here, conceding that the patent was obvious. [00:16:16] Speaker 02: In that scenario, there would be no jurisdiction for the court to hear the appeal. [00:16:20] Speaker 02: And you can imagine a similar situation on why an appellant might try to do something like this, because there are several issues. [00:16:30] Speaker 03: Can I just double check something, and I have no idea if this matters. [00:16:35] Speaker 03: In the ordinary course, the notice of appeal is filed, and then some weeks or months later, [00:16:41] Speaker 03: the appellant says, here's our position. [00:16:45] Speaker 03: And so it's in the brief that the appellant in that hypothetical says, what we want is an affirmance because we no longer contest the decision. [00:16:59] Speaker 03: So in that situation, the court has lost a jurisdiction that it originally had, right? [00:17:07] Speaker 03: By virtue of the new position, [00:17:10] Speaker 03: of the appellant that it's no longer disputing the judgment on appeal. [00:17:17] Speaker 02: Yes. [00:17:17] Speaker 02: If I understand the hypothetical, in this case, I think the most analogous would be when the appellant submitted its statement of issues for appeal. [00:17:26] Speaker 02: And there it indicated that it was seeking affirmance of the judgment. [00:17:32] Speaker 02: But in either scenario, at that point, [00:17:38] Speaker 02: that they are conceding, the case becomes moot, and there is nothing for the court to decide. [00:17:44] Speaker 02: And as the court said in Yingbin, once the case is moot, the proper course is to dismiss the action, even if the appellant would like to have the issue decided for some future case. [00:17:55] Speaker 03: Okay, so now can you get to this case? [00:17:58] Speaker 03: Why doesn't the pronouncements that the district court made [00:18:03] Speaker 03: about 101 and 112 constitute alternative holdings? [00:18:10] Speaker 02: Why do they do not? [00:18:12] Speaker 02: Our position is that they do constitute alternative holdings. [00:18:15] Speaker 02: If I understand the question as to whether or not they are alternative given the way the court phrased its decision? [00:18:26] Speaker 03: Yes, I think there's certainly an issue about that. [00:18:30] Speaker 03: I did notice that last year the [00:18:32] Speaker 03: the Fifth Circuit in talking about the difference between dicta and presidential alternative holdings cited in a case called, I think, United States against Wallace, cited a number of prior decisions that used, you know, if, would kinds of language like this and treated them as alternative holdings. [00:18:55] Speaker 03: But in your brief, you do, and I think you just said, you do treat them as alternative holdings. [00:19:00] Speaker 02: Not only do we treat them as alternative holdings, Your Honor, Sabella treats them as alternative holdings in its brief. [00:19:06] Speaker 03: You know, at page... And it's your position, is it your position that you do expect to invoke issue preclusion based on the... [00:19:21] Speaker 02: That's correct, Your Honor. [00:19:23] Speaker 02: Now, to address the question of whether or not they truly are alternative holdings or whether Sabella could argue that they're not, that's a separate issue that should be presented to the district court. [00:19:36] Speaker 02: The issue of whether or not they are alternative holdings and whether or not they have collateral estoppel effects is not in front of this court. [00:19:44] Speaker 03: Well, if there's a substantial [00:19:48] Speaker 03: risk of their being so treated, why doesn't that meet the pretty low threshold for Article 3 injury? [00:19:57] Speaker 03: Non-speculative. [00:20:00] Speaker 03: You know it's non-speculative because you just said you're going to seek it. [00:20:04] Speaker 02: Because any injury that flows to Sabella is a result of its own decision not to appeal the judgment. [00:20:11] Speaker 02: This is very similar to what the court said in the U.S. [00:20:14] Speaker 02: Bancorp case. [00:20:17] Speaker 02: it's analogous, there the party had settled and then wanted to review findings. [00:20:25] Speaker 02: And the court said that it's not that the judgment is unreviewable, it's unreviewable because of the party's own choice. [00:20:31] Speaker 02: Right. [00:20:32] Speaker 03: I think I'm remembering correctly, the court did not say that there was, that that ruling was not that a mootness ruling, it was that [00:20:43] Speaker 03: Um, it was an equitable judgment that because the appellant had, um, had, uh, agreed to the result, it no longer had, um, uh, equitable standing, if you want to call it that, to, um, seek a vacator. [00:21:01] Speaker 03: And it was a pure equity point. [00:21:04] Speaker 03: I'm sorry. [00:21:05] Speaker 03: No, no, go ahead, please. [00:21:07] Speaker 02: Correct. [00:21:08] Speaker 02: And what I meant, that's why I said the case is analogous. [00:21:10] Speaker 02: There, the equitable remedy of vacater was being considered, but the court said that the injury didn't stem from any, you know, equitable concern. [00:21:21] Speaker 02: The injury was a result of the party's own action. [00:21:23] Speaker 02: The judgment was reviewable. [00:21:25] Speaker 02: The party chose not to review it, and it would be no different than if the party had chosen not to appeal at all. [00:21:30] Speaker 03: Can I just ask you about the quote that I read from Combustion Engineering? [00:21:38] Speaker 03: I take it your view is that when the statement of issues was filed, any dispute about 101 and 112 became moot, in which case why doesn't that Third Circuit statement apply? [00:21:52] Speaker 03: A ruling or finding on a moot issue can have no precedential or collateral estoppel effect. [00:21:58] Speaker 03: That's 391 F3rd, 190 at 222. [00:22:03] Speaker 02: And I also have not read the case, Your Honor, but I agree with the premise. [00:22:07] Speaker 02: Once, it's not that the 112 issues become moot, the entire case becomes moot. [00:22:12] Speaker 02: Once they concede in the judgment, and this is also in the Ying Bing case, which the parties did breathe, once the case is moot, the proper action is to dismiss. [00:22:22] Speaker 02: The court should not make a pronouncement and nothing that the court does. [00:22:25] Speaker 02: should upset the status quo of the district court's opinion. [00:22:29] Speaker 02: And if I may, this is addressed in the Gene Alexander case, which is the case in which the Third Circuit adopted their first restatement view. [00:22:39] Speaker 02: Sabella is urging that the first restatement view is incorrect and that many courts have criticized it, but the reality is this court has to follow the law in the Third Circuit and [00:22:52] Speaker 02: The Third Circuit specifically considered the counterarguments of the second restatement view and rejected them. [00:22:58] Speaker 02: They did so because they favored judicial economy, that parties should have one bite at the apple, that the decisions of a first court should be afforded deference in later actions, and all of that is perverted by this action here. [00:23:14] Speaker 02: Sebelius does not want this court to reach the substantive merits of [00:23:21] Speaker 02: the district court's 112 decision so that it can go back down and re-litigate these issues after we've had a full trial. [00:23:29] Speaker 02: That's entirely in contravention of the first circuit rule. [00:23:33] Speaker 02: And to allow a party to so easily make an end run around the decision by filing a pro forma paper that can't be challenged to strip everything from the district court's decision defeats all of the objectives. [00:23:49] Speaker 02: that the court laid out in the Gene Alexander case. [00:23:52] Speaker 02: And so our position is if this court does find that it has jurisdiction to hear this appeal, then it should consider all of the issues and affirm on all grounds. [00:24:02] Speaker 02: Now, we... Mr. Musgrove? [00:24:03] Speaker 00: Mr. Musgrove, this is Judge Stoll. [00:24:06] Speaker 00: I'm having a hard time, particularly with respect to the written description, reading this opinion as holding that the claims are invalid for failure to comply with the written description requirement [00:24:18] Speaker 00: as an alternative ground or an additional ground for invalidity in addition to obviousness. [00:24:24] Speaker 00: It seems to me as if when I look at it at page 864, [00:24:29] Speaker 00: The judge says, if the patent is not invalid is obvious, the claim value of the 7.5 milligrams per day is not supported by the patent is filed. [00:24:37] Speaker 00: And on the next page, were the court to conclude that the patents are not, that are non-obvious, sorry, it would also conclude that the specification is filed to not reasonably convey to those killed in the arts that they better have possession. [00:24:51] Speaker 00: I mean, logically, it makes sense. [00:24:52] Speaker 00: You know, sometimes the claim is either obvious or [00:24:57] Speaker 00: you know, the claim limitations aren't adequately supported. [00:25:01] Speaker 00: And these things are oftentimes pled in the alternative that way, one or the other. [00:25:07] Speaker 00: Here, I read this as saying that the district court judge is saying specifically that this is either obvious and only if it's not obvious would I say that it's not supported by the specification. [00:25:22] Speaker 00: What is your response to that specifically on written description? [00:25:27] Speaker 02: So on, I assume you mean written description and credible utility or just, I mean, it's the same response. [00:25:34] Speaker 00: I read you about written description. [00:25:35] Speaker 00: I'd like to hear your response. [00:25:38] Speaker 02: Okay. [00:25:38] Speaker 02: So the, whether or not these are alternative holdings or some sort of contingent finding that, you know, Sabella has treated them as alternative holdings and it's free. [00:25:51] Speaker 02: And if the court, [00:25:53] Speaker 00: Well, I'm reading it. [00:25:54] Speaker 00: Yes, go ahead. [00:25:56] Speaker 00: It's not helpful for you to say what Isabella says. [00:25:58] Speaker 00: I want to hear what your response is to the specific language that I identified. [00:26:04] Speaker 02: We see it as not much different than if a court had said, let's say, a preliminary injunction proceeding that I find against the preliminary injunction because the party has not shown a likelihood of success. [00:26:17] Speaker 02: And even if I didn't find that, I still would find against them because... But it's not written that way. [00:26:22] Speaker 00: It's not written that way. [00:26:24] Speaker 00: And honestly, you know, having looked at a fair number of opinions, this is really unique. [00:26:30] Speaker 00: I haven't seen anything written this way. [00:26:33] Speaker 00: Usually, you know, I find the claims invalid for obviousness, and in addition, I find the claims invalid in the written description and utility. [00:26:41] Speaker 00: Or, you know, it's much more, this seems to be a contingent ruling. [00:26:47] Speaker 02: I understand that, Your Honor, but that's a question that the district court should consider in the first instance, and by dismissing the appeal, you don't remove that argument from Sabella. [00:26:56] Speaker 00: Sabella is... What should I... Let me ask you this, because you've already discussed that point with Judge Taranto. [00:27:03] Speaker 00: So what I want to know is, do you have any additional thoughts for me as I think about, and I'm thinking about our jurisdiction, about whether this opinion is actually presenting an alternative holding [00:27:13] Speaker 00: or whether it's a contingent holding on written description and utility? [00:27:21] Speaker 02: If the court has jurisdiction to hear the appeal, we can defend the judgment on any of the grounds that would support the judgment. [00:27:30] Speaker 02: And I don't think that whether or not it's a contingent ground implicates the court's jurisdiction. [00:27:37] Speaker 02: Because if it's a contingent rather than an alternative holding, [00:27:41] Speaker 02: And the court dismissed, well, then there is no preclusive effect. [00:27:44] Speaker 02: If it is truly an alternative holding, there's preclusive effect. [00:27:48] Speaker 02: But the court can hear alternative bases even if it were not. [00:27:54] Speaker 00: Mr. Musgrave, if the ground for saying that there's a case of controversy is that there's preclusive effect, then I have to see whether there's preclusive effect, right? [00:28:05] Speaker 00: I mean, one way for me to rule on it would be to say there is no preclusive effect, because this is an alternative, or this is a contingent ruling. [00:28:12] Speaker 00: And so therefore, I don't have jurisdiction. [00:28:14] Speaker 00: So that's why I'm asking you these questions. [00:28:16] Speaker 00: And again, my question is pretty simple. [00:28:18] Speaker 00: Do you have anything else that you would want to point me to, to help me understand why this is not contingent ruling? [00:28:29] Speaker 02: Well, other than the court's footnote and its opinion, where the court said [00:28:35] Speaker 02: did not accept the premise that this was a situation where the patents were either invalid as obvious or invalid under the 112 grounds. [00:28:46] Speaker 00: For utility. [00:28:47] Speaker 00: On page 60. [00:28:48] Speaker 02: Okay, thank you. [00:28:48] Speaker 02: For utility. [00:28:54] Speaker 02: But if the court has jurisdiction, regardless of whether or not these grounds are alternative holdings, the court [00:29:02] Speaker 02: can consider them, even if they weren't in the opinion. [00:29:06] Speaker 02: If this had just been litigated but didn't factor in the opinion, the court is still allowed to consider any ground in the record that could support the judgment. [00:29:14] Speaker 02: And here, where the parties have conducted a costly trial and a complex litigation fully considering these issues, the purposes stated by the Gene Alexander Court would support considering these other grounds and affirming on each basis. [00:29:32] Speaker 02: The, we acknowledge that there are cases that say that a party, I mean, the court wants it, has one ground that's sufficient to decide the judgment. [00:29:44] Speaker 02: It does not have to reach other grounds, but there is nothing that says that the court is precluded from doing so. [00:29:49] Speaker 02: And in this scenario, like the interests of, [00:29:54] Speaker 02: the first statement rule as laid down by the Third Circuit are better served by the court considering this and affirming on the written description and credible utility grounds as well, if the court is going to exercise jurisdiction. [00:30:07] Speaker 01: Mr. Cunning? [00:30:08] Speaker 01: Yes. [00:30:09] Speaker 01: This is Judge Chen. [00:30:11] Speaker 01: What if hypothetically, Sabella's blue brief had appealed the invalidity judgment below, but its blue brief [00:30:22] Speaker 01: was only attacking the written description and utility analysis and didn't say anything about the 103 analysis. [00:30:34] Speaker 01: Would you say after those circumstances this court should have, would under those circumstances just summarily affirm because the [00:30:46] Speaker 01: appellant had failed to actually make an express challenge in that circumstance as to one of the alternative grounds. [00:30:55] Speaker 02: I don't think that the court is required to elevate form over substance. [00:31:00] Speaker 02: If the court looks at the briefing and can tell that the party has not challenged the judgment because they've remained silent on a ground supporting the judgment, the court could still decide that there was no [00:31:13] Speaker 02: jurisdiction to hear the appeal and dismiss. [00:31:15] Speaker 02: And in the San Francisco Patrol Special Officers case and the Popo cases that Sabellas cited in its reply briefing, [00:31:25] Speaker 02: While the court did in those cases summarily affirm, it talks about how in this kind of situation where a party just fails to appeal on all grounds, that the party has abandoned its appeal. [00:31:40] Speaker 02: That's also in the McKay decision cited by San Francisco, where they conclude that a party that fails to raise all of the grounds that would support challenging the judgment [00:31:53] Speaker 02: has done insufficient action to preserve the appealability of the claim. [00:31:58] Speaker 02: So I don't think the court has to reach that question because of the fact that Sabella expressly is asking this court to affirm the judgment. [00:32:06] Speaker 02: But in that scenario, the court is not required to elevate form over substance. [00:32:11] Speaker 02: And the consequence of the first restatement rule is that the parties are required to appeal the judgment. [00:32:18] Speaker 02: That is what the court said. [00:32:21] Speaker 02: And Gene Alexander, they specifically considered [00:32:24] Speaker 02: the situation, you know, the counter-argument that this would require parties to raise appeals where they might lose on an alternative basis. [00:32:31] Speaker 02: And they rejected that consideration in favor of the overall judicial economy of affording collateral estoppel effect to all of the grounds that support the judgment in the district court's opinion. [00:32:44] Speaker 02: So if I'm... I'm not sure where I am on time. [00:32:47] Speaker 03: Yeah, no, I think... [00:32:48] Speaker 03: Take another two minutes just so that it roughly evens out with Mr. Fleming and his rebuttal. [00:32:54] Speaker 02: Okay. [00:32:55] Speaker 02: Just briefly, if this court does exercise jurisdiction, just briefly, on the credible utility and written description grounds, Savella has not shown that the court committed clear error. [00:33:06] Speaker 02: These are factual determinations. [00:33:09] Speaker 02: The district court relied on the testimony of Savella's own experts testifying that a person of ordinary skill in the art [00:33:17] Speaker 02: would not believe that the claimed invention would have worked for the stated purpose. [00:33:22] Speaker 02: That decision is entitled to great deference, and nowhere has Isabella shown that this was in error. [00:33:30] Speaker 02: They've reinvented the testimony on their reply brief as being about FDA approval, but the testimony of the witnesses clearly demonstrates that that is not what they were talking about. [00:33:44] Speaker 02: Dr. Simon, [00:33:45] Speaker 02: acknowledges at appendix 1904 in lines 98 to 7, sorry, at page 98, line 7 to 8, that he's being asked a hypothetical question that goes to obviousness and utility. [00:33:58] Speaker 02: The questioning at 1905 to 1906 has nothing to do with FDA approval. [00:34:04] Speaker 02: He's being asked whether a person of skill in the ARC would have an expectation one way or other, whether the claimed dose would be effective to treat hot flashes. [00:34:12] Speaker 02: And again, at [00:34:14] Speaker 02: Appendix 1877 to 78 on page 71, line 15 over to page 72, line 18. [00:34:22] Speaker 02: In his response, he indicates that he is responding in terms of credible utility. [00:34:28] Speaker 02: I was looking at the claimed invention in the patent. [00:34:31] Speaker 02: So there's no support for the idea that the experts were testifying about the requirements for FDA approval as opposed to what the patents required to meet the credible utility standard. [00:34:41] Speaker 03: I think that's probably where we should stop, Mr. Cunning. [00:34:47] Speaker 03: Thank you. [00:34:47] Speaker 03: Thank you. [00:34:48] Speaker 03: And Mr. Fleming, you have your rebuttal time left. [00:34:52] Speaker 03: Was that three minutes? [00:34:53] Speaker 03: I don't quite remember. [00:34:55] Speaker 04: Yes, three minutes. [00:34:56] Speaker 04: This should be plenty, Your Honor. [00:34:58] Speaker 04: I only have three points I'd like to address. [00:35:03] Speaker 04: The first is Mr. Cunning's accusation that we're trying to avoid this court's review of the utility and written description arguments. [00:35:09] Speaker 04: Nothing could be further from the truth. [00:35:11] Speaker 04: We would be happy to have the court review those legal errors and do so now, but we're being candid with the court that we think they should wait another day. [00:35:19] Speaker 04: But we certainly have the right to appellate review of those issues at some point, which is why we brought this appeal and why we briefed them in order to make clear that we do not want to give that up. [00:35:29] Speaker 04: And we believe we needed to do this in order to preserve our right to do so, so that we wouldn't be accused of being collaterally stopped in the second case. [00:35:38] Speaker 04: The second point is Mr. Cunning argues that in order for us to be able to preserve our opportunity to appeal utility and written description, we also needed to brief obviousness as well. [00:35:50] Speaker 04: He cites no authority for that proposition that in a first restatement jurisdiction, a party has to load up its appeal brief with extraneous grounds just to preserve the opportunity to avoid preclusion by alternative grounds that it does care about. [00:36:02] Speaker 04: It's already wasteful enough that we have to bring this appeal at all. [00:36:05] Speaker 04: In many regional circuits, it wouldn't have been needed. [00:36:08] Speaker 04: But we were not required to burden the court with 30 added pages of arguments regarding obviousness, as to which we've made the determination that we don't need this court's attention. [00:36:18] Speaker 04: We take to heart the court's repeated admonitions to be judicious in choosing our appellate issues. [00:36:22] Speaker 04: We disagree with the obviousness ruling, but because it will have no preclusive effect in the 237 patent proceeding, because it has narrower claims, there was no need to present it to this court. [00:36:33] Speaker 04: And if this had just been an obviousness decision, which we asked the district court to clarify was the case, [00:36:38] Speaker 04: we wouldn't have needed the appeal. [00:36:39] Speaker 04: But because the other two issues were addressed and were addressed in an erroneous way, a legally erroneous way, we needed to and we have the right to seek appellate review. [00:36:47] Speaker 04: That cannot mean that we were required to appeal and brief the obviousness decision as well. [00:36:52] Speaker 04: And the final point is the suggestion that we're taking issue with the Third Circuit's adoption of the first restatement rule. [00:36:58] Speaker 04: No, we don't. [00:36:59] Speaker 04: We take that as a given. [00:37:00] Speaker 04: That is the animating reason why we had to bring this appeal. [00:37:03] Speaker 04: This appeal is the consequence of the fact [00:37:05] Speaker 04: that the Third Circuit has followed the first free statement. [00:37:07] Speaker 04: It has every authority to do it. [00:37:10] Speaker 04: It has done it. [00:37:11] Speaker 04: We take that as presented. [00:37:12] Speaker 04: Jean Alexander just says that if we want to avoid issue preclusive effects, we need to take an appeal. [00:37:18] Speaker 04: We have. [00:37:19] Speaker 04: And so we think the right answer here is to recognize that we have an appeal from a judgment. [00:37:24] Speaker 04: It is properly within this court's jurisdiction. [00:37:26] Speaker 04: And the right answer is to affirm on the basis of the uncontested finding of obviousness, state that the other two grounds are not being reached and are not preclusive, [00:37:34] Speaker 04: And that should be the end of the matter. [00:37:36] Speaker 04: Unless the court has further questions, I thank the court for the attention this morning. [00:37:40] Speaker 03: Thank you, Mr. Fleming. [00:37:42] Speaker 03: Mr. Cummings, the case is submitted.