[00:00:00] Speaker 03:
In this appeal, the PTO's position is that a statutory adjustment under 154 in and by itself is an unjust term extension.

[00:00:19] Speaker 03:
They don't claim that the patentee did anything wrong.

[00:00:22] Speaker 03:
There's no gamesmanship.

[00:00:24] Speaker 03:
There's nothing.

[00:00:25] Speaker 03:
They just took the extension that was rightfully given to them under statute.

[00:00:29] Speaker 03:
Based on that patent term extension, the adjustment under 154, the patent law was invalidated for patents.

[00:00:36] Speaker 01:
Well, we still have the law of double patenting.

[00:00:39] Speaker 03:
Yes.

[00:00:40] Speaker 01:
And it's apparently conceded that these claims are not patentably distinct from each other.

[00:00:48] Speaker 03:
We did not contest that below.

[00:00:50] Speaker 01:
So there is a double patenting issue here.

[00:00:54] Speaker 03:
Well, from double patenting, there's two bases for double patent.

[00:00:57] Speaker 03:
One is there's an unjust extension of time, and there's a different ownership leading to potential gainsmanship.

[00:01:06] Speaker 03:
In this particular instance, you had to find there's an unjust extension of time.

[00:01:09] Speaker 01:
Well, those are reasons for the law.

[00:01:12] Speaker 01:
But the law is that if two patents are patentably indistinct, one should not extend beyond the other.

[00:01:25] Speaker 03:
But if it's given to it by statute, in this particular instance, in order for the patent office to get to where it got to, it had to ignore the express natural reading of the statute.

[00:01:38] Speaker 04:
The statute doesn't talk about double patenting, right?

[00:01:43] Speaker 04:
And generally, we assume when there's no language which specifically changes earlier doctrine,

[00:01:55] Speaker 04:
that the patent statute doesn't change the doctrine.

[00:01:59] Speaker 04:
That's what the Supreme Court said in Helsing.

[00:02:02] Speaker 04:
And so what you're saying is if you've got two patents that are patentably indistinct, that were filed on the same day, and one got a patent term adjustment and the other one didn't,

[00:02:14] Speaker 04:
the term of the patent with the patent term adjustment is not to be limited to the term of the patent that issued more promptly, right?

[00:02:29] Speaker 04:
So you could end up getting a patent which goes for more than 20 years from the filing date, even though there was no delay in the issuance of that patent, right?

[00:02:44] Speaker 03:
Well, the only way you get a patent term adjustment is if there is delays.

[00:02:51] Speaker 04:
Yeah, but in my hypothetical, there's no delay for patent one, which is patentably indistinct from patent two.

[00:02:58] Speaker 04:
Both filed on the same date.

[00:03:00] Speaker 04:
But you're saying that the term of the second patent

[00:03:08] Speaker 04:
doesn't get restricted by the double patenting doctrine, right?

[00:03:12] Speaker 03:
Not by statute.

[00:03:16] Speaker 04:
But it would have before the statute was passed, right?

[00:03:21] Speaker 03:
In theory, yeah, before the statute was passed, yes.

[00:03:25] Speaker 04:
So what indication is there that Congress, in enacting patent term adjustment, wanted to change the double patenting doctrine?

[00:03:33] Speaker 03:
Well, I think that the actual language of the statute itself

[00:03:38] Speaker 03:
The language of the statute is very clear.

[00:03:42] Speaker 03:
It says that the term shall be adjusted.

[00:03:46] Speaker 03:
One day, every day, there's a delay.

[00:03:50] Speaker 01:
It says that, yes.

[00:03:51] Speaker 01:
But it doesn't say, it doesn't deal with double patenting.

[00:03:56] Speaker 01:
Double patenting is part of the law.

[00:03:59] Speaker 01:
And if there were only one patent, PTA would certainly apply.

[00:04:04] Speaker 01:
But there are multiple patents here.

[00:04:07] Speaker 03:
There are multiple patents, and under the 154B1, it tells you how to do the adjustments.

[00:04:20] Speaker 03:
Then our B2 gives you some limitations.

[00:04:23] Speaker 03:
And the limitations are very clear.

[00:04:26] Speaker 03:
And one limitation is, if there is a terminal disclaimer filed, then you cannot adjust it past that.

[00:04:34] Speaker 03:
So in this particular case, what's happened

[00:04:37] Speaker 03:
is that the patent office saying that adjustment in itself by statute is unjust.

[00:04:46] Speaker 04:
No, it's not saying that.

[00:04:47] Speaker 04:
It's just saying that the double patent doctrine, without regard to whether it's just or unjust, doesn't allow you to extend the patent term.

[00:04:56] Speaker 03:
But as this court noted in Ezra, a judge-made doctrine should not cut short statutory extension.

[00:05:04] Speaker 04:
Well, but that's always been true, hasn't it?

[00:05:07] Speaker 04:
from the time in the 1870s when we had specific patent terms, patent, double patenting has always restricted the term, right?

[00:05:17] Speaker 03:
The double patenting has always restricted the term, but you have a statutory term, statutory extension.

[00:05:21] Speaker 04:
The statute said you get a patent for so many years.

[00:05:25] Speaker 04:
And the Supreme Court in Miller and other cases said, no.

[00:05:31] Speaker 04:
The statute says you get one patent, not two patents.

[00:05:35] Speaker 04:
And so the term has to be restricted by the double patenting doctrine.

[00:05:41] Speaker 03:
But this is regarding a statutory extension.

[00:05:45] Speaker 03:
So that's different.

[00:05:46] Speaker 03:
If you're doing some type of back in the day, obviously, for your grade round, you could file these continuations.

[00:05:52] Speaker 03:
And you can get different filing days, 17 years from issuance.

[00:05:55] Speaker 03:
You can play games with this.

[00:05:58] Speaker 03:
That was the very basis for the double patenting statute.

[00:06:01] Speaker 03:
Now, since that time period, I'm saying double patenting is still in play.

[00:06:05] Speaker 03:
But here, something's different at play.

[00:06:08] Speaker 03:
These are statutory extensions of time.

[00:06:11] Speaker 03:
So we're not talking about a situation whereby the normal term of a patent is at play here.

[00:06:18] Speaker 03:
We're talking about statutory extensions.

[00:06:20] Speaker 02:
It seems to me that

[00:06:25] Speaker 02:
And the real problem that you have to deal with here is that the claims in the two patents that we're talking about are patently indistinct.

[00:06:35] Speaker 02:
So really, there's one patent here that covers just one invention.

[00:06:40] Speaker 02:
And section 101 says you can only have one invention.

[00:06:45] Speaker 02:
You can't have more than one patent on one invention.

[00:06:50] Speaker 02:
You can't have two patents on the same invention.

[00:06:53] Speaker 02:
But here, we have exactly that.

[00:06:55] Speaker 02:
Because the claims, the patents, as you didn't dispute this, they're patently indistinct.

[00:07:03] Speaker 02:
So when the claims expired on that one patent, then why don't we just simply say the claims expired on the other one?

[00:07:17] Speaker 03:
Because the patent office actually looked at that and said they were patently indistinct.

[00:07:21] Speaker 03:
Down below, the examiner did look at double patenting, and decided it was not appropriate.

[00:07:25] Speaker 02:
There's no dispute.

[00:07:27] Speaker 02:
No one disputed that.

[00:07:29] Speaker 02:
It's undisputed that the PANs are panely indistinctible.

[00:07:34] Speaker 03:
We did not raise that down below.

[00:07:35] Speaker 03:
We did raise below that was a material issue of new patentability, because the examiner did look at double patenting.

[00:07:42] Speaker 02:
He did.

[00:07:42] Speaker 02:
At that point, I mean, you could have moved towards a terminal disclaimer.

[00:07:49] Speaker 02:
You could have taken another action in order to draw distinctness between the patents.

[00:07:53] Speaker 02:
And I think that if we even have a slight variation between the two patents, then we get to these other arguments.

[00:08:00] Speaker 02:
I'm having a hard time just getting past the initial argument that there can only be one patent per invention.

[00:08:07] Speaker 02:
And here there's two patents per invention.

[00:08:10] Speaker 02:
And it seems to me that by law, operational law, that if the patent expires at this day,

[00:08:19] Speaker 02:
then you can't have the other pan continue on.

[00:08:22] Speaker 02:
I mean, that flies in the face of the very most basic notion, legal notion of pan law.

[00:08:29] Speaker 03:
Yeah, but I appreciate that point.

[00:08:32] Speaker 03:
In this particular instance, during our original examination, there were continuations filed.

[00:08:37] Speaker 03:
And those continuations are different inventions, different aspects of the invention.

[00:08:41] Speaker 03:
That's presumed.

[00:08:42] Speaker 03:
That's how continuation practice works.

[00:08:45] Speaker 04:
But you're not arguing.

[00:08:47] Speaker 04:
You agree that they're patentably indistinct.

[00:08:50] Speaker 04:
So we don't have to worry about a situation where they are distinct.

[00:08:54] Speaker 03:
What we argued down below was that the examiner looked at this issue, determined they were patentably distinct, did not require restriction requirements, did not require terminal disclaimer, and therefore there is not new issues of fact.

[00:09:06] Speaker 03:
So what?

[00:09:07] Speaker 03:
What difference does it make?

[00:09:09] Speaker 04:
Now we're in a different situation.

[00:09:12] Speaker 04:
They're patentably indistinct.

[00:09:15] Speaker 03:
Well, for the obvious determination, you're saying one is not patently distinct from the other, is the argument.

[00:09:22] Speaker 03:
What we argued was that was already looked at, and it did not raise to the level of... I don't understand what you're saying.

[00:09:28] Speaker 04:
I thought this case came to us with a concession assumption that the two were patently indistinct.

[00:09:35] Speaker 03:
Well, we said we did not raise it down below.

[00:09:37] Speaker 03:
We did raise that there was a new material issue of fact down below with the examiner.

[00:09:42] Speaker 03:
The examiner did look at this issue.

[00:09:45] Speaker 03:
The point of this appeal really comes down to whether a statutory extension or adjustment is in and by itself enough to invalidate patents.

[00:09:55] Speaker 03:
That's the only thing that is being done here.

[00:09:58] Speaker 01:
The best argument is that the statutory extension overrides judge-made double patent law.

[00:10:06] Speaker 03:
Absolutely.

[00:10:07] Speaker 01:
But as Judge Dyke pointed out earlier, double patent law is a long-term

[00:10:15] Speaker 01:
part of the law.

[00:10:16] Speaker 01:
When Congress enacted PTA, it knew full well what the law of double patenting was.

[00:10:25] Speaker 01:
And it didn't in any way override it.

[00:10:29] Speaker 03:
It didn't override double patenting because that was not the intent of the statute.

[00:10:36] Speaker 03:
The statute was to compensate patentees for delays of their own doing.

[00:10:42] Speaker 01:
Not necessarily.

[00:10:45] Speaker 01:
to result in multiple not patentably indistinct claims.

[00:10:53] Speaker 01:
It didn't deal with that.

[00:10:55] Speaker 01:
It just accepted existing law.

[00:10:58] Speaker 03:
Well, it did give limitations for the patent term adjustments.

[00:11:02] Speaker 03:
And the limitations do address the idea that if there are patently indistinct, then therefore, terminal disclaimers would have been filed.

[00:11:10] Speaker 01:
But they weren't here.

[00:11:12] Speaker 03:
because the examiner did his job and did not give a double patented rejection.

[00:11:18] Speaker 03:
The examiner is presumed to do their job down below.

[00:11:22] Speaker 03:
He did interference searches.

[00:11:25] Speaker 03:
That's in the record below.

[00:11:27] Speaker 02:
You can't risk your appeal on the examiner not doing its job.

[00:11:34] Speaker 02:
I mean, you're managing the pens, you're prosecuting them, and you're looking at them as they come out.

[00:11:41] Speaker 02:
Surely you knew that the claims in the two pounds were the same.

[00:11:47] Speaker 03:
Same claims.

[00:11:49] Speaker 03:
To be candid, I think the language in Ezra, the virus Ezra, was pretty clear.

[00:11:56] Speaker 03:
And so that case law was available.

[00:11:59] Speaker 01:
Which language?

[00:12:00] Speaker 03:
The language that a statutory extent, a judge-made doctrine should not cut short statutory extensions.

[00:12:08] Speaker 01:
That was a furthermore.

[00:12:11] Speaker 01:
Furthermore sentence, that's not the holding of the case.

[00:12:14] Speaker 03:
Yeah, but it treated patent term extensions under 156.

[00:12:20] Speaker 03:
Adjustment, yeah.

[00:12:21] Speaker 03:
Excuse me?

[00:12:22] Speaker 02:
No, no.

[00:12:22] Speaker 02:
You keep saying extension.

[00:12:24] Speaker 02:
You mean the adjustment.

[00:12:25] Speaker 03:
The Ezra case was patent term extension under 156.

[00:12:29] Speaker 03:
It treated that in a very specific manner.

[00:12:31] Speaker 03:
We're saying 154 should be treated accordingly.

[00:12:33] Speaker 03:
In 156, there was a term of disclaimer.

[00:12:36] Speaker 03:
I mean, in Ezra, there was a term of disclaimer, and you got extension nonetheless.

[00:12:39] Speaker 03:
Because that's the statutory extension.

[00:12:40] Speaker 02:
Your argument would make sense to me if you were entitled to that adjustment.

[00:12:46] Speaker 02:
I mean, you were given the adjustment because of the delay.

[00:12:50] Speaker 02:
But at the end of the day, once you get to the expiration of the other patent, then it extinguishes it.

[00:12:55] Speaker 02:
I mean, you cannot have two patents for the same invention.

[00:13:01] Speaker 03:
Well, if you look at the Ezra case, where there was an actual termless claim or file, correct?

[00:13:07] Speaker 03:
And so they had the same

[00:13:08] Speaker 03:
The extensions, nonetheless, was viable because it was a statutory extension.

[00:13:13] Speaker 03:
We're saying the same thing happens here.

[00:13:15] Speaker 04:
Ezra specifically recognizes that double patenting survived and applied and it only said that once you've

[00:13:26] Speaker 04:
taking account of double patenting that because of delays at the FDA with respect to product approval, a different issue, you get the extension and you can choose which patent.

[00:13:40] Speaker 03:
But nonetheless, there was a terminal disclaimer filed because there was a patent in distinct patents, extension applied, and that was not used for double patenting.

[00:13:50] Speaker 03:
I mean, the double patenting doctrine because the statute could not overwrite the doctrine.

[00:13:56] Speaker 01:
Counsel, you want to say some time?

[00:13:58] Speaker 01:
If the Patent Office will give you three minutes for rebuttal.

[00:14:02] Speaker 01:
Thank you.

[00:14:04] Speaker 01:
Ms.

[00:14:04] Speaker 01:
Caprahan.

[00:14:05] Speaker 00:
Good morning, Your Honors, and may it please the Court, as already recognized by this Court, during this proceeding, Select did not and does not dispute that its challenge claims on appeal are patentably indistinct from its prior reference claims.

[00:14:20] Speaker 00:
that its challenge claims expired after its reference claims enjoyed their full patent term, and that Select failed to file a terminal disclaimer tying the expiration dates and ownership of the challenge claims and reference claims.

[00:14:33] Speaker 00:
By not filing that terminal disclaimer before its first set of claims expired, Select has triggered the very concerns that justify unpatentability under ODP.

[00:14:44] Speaker 00:
And as this Court has already explained in Behringer, by failing to terminally disclaim a later patent

[00:14:50] Speaker 00:
prior to the expiration of an earlier patent, select enjoyed an unjustified advantage, a purported time extension of the right to exclude from the date of the earlier patent.

[00:15:01] Speaker 01:
Counsel, the PTAB relied to an important part on P2B.

[00:15:10] Speaker 01:
No patent determined which has been disclaimed may be adjusted beyond the expiration date.

[00:15:18] Speaker 01:
specified in the disclaimer.

[00:15:20] Speaker 01:
That doesn't really apply here, does it?

[00:15:22] Speaker 01:
There was no disclaimer in this case.

[00:15:24] Speaker 00:
There was no disclaimer in this case, but as this court has already explained in the ESRA decision, that when under its original expiration date without PTE, for example, in the ESRA case, a patent should have been but was not terminally disclaimed because of ODP, the ODP case law applies.

[00:15:44] Speaker 00:
And that is the situation here.

[00:15:46] Speaker 00:
Here, because selects later issued claims or later expiring claims should have been, but were not terminally disclaimed, ODP applies.

[00:15:56] Speaker 00:
And therefore, even though there is no existing terminal disclaimer, once that ODP rejection is made, should select have wanted to obviate that ODP rejection, they could have filed a terminal disclaimer at that point.

[00:16:10] Speaker 00:
And this court has recognized in multiple cases that a patent holder can file a terminal disclaimer

[00:16:16] Speaker 00:
once an ODP rejection or challenge arises, even in litigation.

[00:16:22] Speaker 01:
The board opinion said, we know from P to B what Congress meant.

[00:16:30] Speaker 01:
Congress speaks precisely when it means something.

[00:16:35] Speaker 01:
And we don't read in meanings beyond specific language, do we?

[00:16:40] Speaker 00:
That's correct.

[00:16:41] Speaker 00:
Congress there knew what it meant.

[00:16:43] Speaker 00:
Congress already had issued Section 253, which talked about disclaimers in the first instance.

[00:16:50] Speaker 00:
And therefore, Congress recognized that ODP applies to determining whether or not a patent should be patentable.

[00:16:58] Speaker 00:
And because of that, when Congress decided that under Section 154,

[00:17:04] Speaker 00:
terminal disclaimer cuts terms, what Congress recognizes that ODP applies to determining whether or not a statutory term should issue.

[00:17:14] Speaker 04:
Whether or not that's true.

[00:17:15] Speaker 04:
I mean, the real argument is they passed the statute, there's no indication that they intended to change double patenting, and the general rule is that it would continue because it's firmly rooted in Supreme Court doctrine going back more than a hundred years.

[00:17:31] Speaker 00:
That's correct.

[00:17:32] Speaker 00:
I mean, the

[00:17:33] Speaker 00:
Because the later issued claims, or sorry, the later expiring claims had term that went beyond the first issue claims, which they've already enjoyed the full term of those claims.

[00:17:46] Speaker 00:
Because that term extended, ODP applies in the situation.

[00:17:49] Speaker 00:
And at that point, SELECT should have filed a terminal disclaimer.

[00:17:54] Speaker 00:
But because it did not file a terminal disclaimer, ODP applies and those claims are unpatentable.

[00:18:01] Speaker 01:
Now, they all would have expired at the same time on October 6, 2017, 20 years from the effective filing date.

[00:18:13] Speaker 01:
That's correct.

[00:18:14] Speaker 01:
But various decisions among these seem to think the 742 patent was invalidated over 369, which has a 45-day extension.

[00:18:32] Speaker 01:
But then the 369 is invalidated over the 036 patent, which has no extension.

[00:18:40] Speaker 01:
It's a curious set of facts here.

[00:18:43] Speaker 01:
Why shouldn't, under your theory, they all have expired when the 036 patent without a PTA expired?

[00:18:53] Speaker 00:
Well, some of the patents that did have patent term adjustment before the Patent Office, there aren't claims that expired

[00:19:01] Speaker 00:
before that that are patentably indistinct.

[00:19:04] Speaker 00:
And so because those claims issued and there weren't a prior expiring set of claims that cut the term of that invention, those claims do enjoy the benefit of patent term extension, or sorry, patent term adjustment under section 154, because there is no ODP problem with those claims.

[00:19:25] Speaker 00:
There is no terminal disclaimer that should have been filed that would have cut the term of those claims.

[00:19:30] Speaker 01:
Doesn't the double patenting doctrine invalidate the whole patent or just claims?

[00:19:37] Speaker 00:
So the double patenting doctrine invalidates claims.

[00:19:40] Speaker 00:
But if a terminal disclaimer is filed, then the term of the patent is filed.

[00:19:45] Speaker 01:
But there was no terminal disclaimer here.

[00:19:48] Speaker 00:
Sorry.

[00:19:48] Speaker 01:
There was no terminal disclaimer here.

[00:19:50] Speaker 00:
Correct.

[00:19:50] Speaker 00:
There was no terminal disclaimer here.

[00:19:52] Speaker 01:
Do some claims continue to live here?

[00:19:55] Speaker 00:
Some claims do continue to live here.

[00:19:58] Speaker 04:
Because they're patentably distinct.

[00:20:00] Speaker 00:
Because they're patentably distinct.

[00:20:02] Speaker 00:
That's correct.

[00:20:02] Speaker 01:
So the patent isn't invalidated, just claims.

[00:20:05] Speaker 00:
Correct.

[00:20:06] Speaker 00:
So the only claims that are found to be unpatentable here are the challenge claims.

[00:20:11] Speaker 00:
And that's because they're patentably indistinct, and Select has already enjoyed the full term of that invention.

[00:20:17] Speaker 00:
But Select has a number of additional claims in these patents that continue to have viability, or at least until their six-year term for them to

[00:20:27] Speaker 00:
to get damages for those claims, because I think all of the claims are expired at this point.

[00:20:31] Speaker 01:
So double patenting doesn't invalidate the patent?

[00:20:34] Speaker 01:
Correct.

[00:20:35] Speaker 00:
Double patenting only invalidates the claims.

[00:20:37] Speaker 00:
And that's why there is no equity problem here, because Select has already enjoyed the full term of the inventions that it had in the initial reference claims.

[00:20:49] Speaker 00:
And those claims should have been cut by the expiration of the prior patents.

[00:20:54] Speaker 00:
But Select still has a number of claims that are patentably distinct that can enjoy their full term, including their patent term adjustment period.

[00:21:04] Speaker 02:
And that's because ODP essentially is an obviousness inquiry.

[00:21:10] Speaker 00:
The non-statutory abscess type of patenting is essentially an obviousness inquiry.

[00:21:14] Speaker 00:
That's correct.

[00:21:15] Speaker 00:
And Select here has conceded there is no patentably distinct invention in the challenge claim.

[00:21:22] Speaker 01:
So we have no issue of obviousness in this case.

[00:21:26] Speaker 00:
We have no issue of obviousness in this case.

[00:21:28] Speaker 00:
That's correct, because they have conceded that issue.

[00:21:32] Speaker 00:
And lastly, there is an S&Q that was raised here, as this court recently clarified in Vivint.

[00:21:38] Speaker 00:
A question of patentability is new until it has been considered and decided on the merits.

[00:21:43] Speaker 00:
And here, the examiner never decided that these particular claims were patentably indistinct from prior claims that Select had gotten already.

[00:21:53] Speaker 00:
And further, in Patlix, this court explained that the purpose of the re-examination statute is to correct any errors made by the government.

[00:21:59] Speaker 00:
And here, the examiner admittedly made an error during original prosecution.

[00:22:06] Speaker 00:
And this is the type of, so even though there are here a number of claims that are found to be unpatentable under ODP, as I've already mentioned, select still has a number of claims that are patentably distinct that can enjoy their full patent term.

[00:22:22] Speaker 01:
Now what about the statement in Novartis, sometimes referred to as ESRA, that the statute prevails over Judge May Doctrine?

[00:22:33] Speaker 00:
So in ESRA,

[00:22:35] Speaker 00:
The court there was construing both section 156 and section 154.

[00:22:42] Speaker 00:
And unlike section 156, the plain language of section 154 expressly excludes patents in which a terminal disclaimer has been filed, as we've already discussed.

[00:22:51] Speaker 00:
And that by expressly referring to terminal disclaimers in section 154, but not in section 156, Congress clearly intended for terminal disclaimers to bar patents from receiving the benefits of PTA,

[00:23:04] Speaker 00:
based on USPTO delay, but not preventing patents from receiving PTE due to FDA regulatory work.

[00:23:11] Speaker 04:
But the answer is that the double patenting doctrine has always been, in theory, contrary to the statute, which says your patent term shall be 17 years or now 20 from filing.

[00:23:24] Speaker 04:
So I don't think that, given that history, that the court could have meant that

[00:23:29] Speaker 04:
the statute necessarily prevails over and wipes out the double patenting doctrine because the statute was always clear and there was an implied exception that the Supreme Court developed.

[00:23:40] Speaker 00:
That's correct.

[00:23:41] Speaker 00:
That's correct.

[00:23:42] Speaker 00:
Congress is presumed to have legislated in view of that doctrine and that is clear based on the other provisions of the Patent Act that the doctrine continues to live on.

[00:23:54] Speaker 00:
If there are no further questions, I yield the rest of my time.

[00:23:57] Speaker 01:
Thank you, counsel.

[00:23:58] Speaker 01:
Mr. Andre, we'll give you three minutes.

[00:24:02] Speaker 03:
We'll go back to the court's language in Novartis v. Ezra.

[00:24:05] Speaker 03:
It talks about the interaction between section 156 and obvious type double patenting, the very first paragraph.

[00:24:11] Speaker 03:
I think it's very instructive.

[00:24:13] Speaker 03:
It talks about the fact that the two patents are patently indistinct.

[00:24:18] Speaker 03:
And therefore, the terminus number was filed in that case.

[00:24:21] Speaker 03:
And two patents are patently indistinct.

[00:24:25] Speaker 03:
The court said we conclude the logical extension of our holding in Merck

[00:24:28] Speaker 03:
Obvious title of patent does not invalidate patent obtained PTE extension in such a scenario.

[00:24:34] Speaker 03:
That's what we're saying here.

[00:24:36] Speaker 03:
That even if it is, if you find that it is patently indistinct, a statutory extension trumps obvious title of patenting.

[00:24:45] Speaker 03:
That's what the court found in the Novartis versus Ezra.

[00:24:49] Speaker 03:
And that's what the statute says.

[00:24:50] Speaker 03:
Statute uses the word shell.

[00:24:52] Speaker 03:
And we can talk about the limitations of how you do a calculation of the extension.

[00:24:58] Speaker 03:
They give a provision for terminal disclaimers, and it is very clear.

[00:25:04] Speaker 03:
No patent of the term of which has been disclaimed beyond a specific date has been disclaimed past tense.

[00:25:11] Speaker 03:
It should be adjusted under this section beyond the expiration date specified in the disclaimer.

[00:25:16] Speaker 03:
As Your Honor has pointed out, there were no disclaimer filed in this case.

[00:25:19] Speaker 03:
None requested by the examiner.

[00:25:21] Speaker 03:
So Select did what it was entitled to do.

[00:25:25] Speaker 03:
They got a patent term adjustment.

[00:25:28] Speaker 03:
The law, the controlling law in this area, going back from Breckenridge, where an adjustment came in place, because they're being changing the law, going from pre-Ergerway to the post-Ergerway to the finding of Merck and now in Ezra.

[00:25:45] Speaker 03:
That controlling case law would only give one conclusion here.

[00:25:49] Speaker 03:
And that is that the fact that the patent term extensions or patent term adjustments were given in this case should not be a basis.

[00:25:58] Speaker 03:
for an unjust extension and, obviously, a double patenting therefore.

[00:26:04] Speaker 03:
There should be questions.

[00:26:05] Speaker 03:
I'll rest my time.

[00:26:07] Speaker 03:
Thank you, counsel.

[00:26:08] Speaker 03:
Appreciate it, your honor.

[00:26:08] Speaker 03:
The case is submitted.