[00:00:00] Speaker 04:
issue of the application on appeal are resulting in a defective reissue declaration.

[00:00:06] Speaker 02:
So what policy reason do you believe there would be to treat 102 and 103 rejections differently from 101 rejections when applying the recapture rule?

[00:00:20] Speaker 04:
I think from a policy standpoint,

[00:00:24] Speaker 04:
Okay, among other things, 102 and 103 statutory in case law have been pretty consistent over the last 50 years.

[00:00:34] Speaker 04:
Whereas 101 statutory subject matter has changed dramatically even in the last 15 years.

[00:00:45] Speaker 04:
And as, you know, in cases, there's been many cases where there's been

[00:00:54] Speaker 04:
disagreement between this court and the Supreme Court, such as the applicable cases here, in Ray Bilsky, which was decided in 2008 by Alan Bogg panel of the Federal Circuit, and then Bilsky v. Kalbos, where the... So are you contending that any rules that might otherwise touch on Section 101 should not change until you feel like 101 law is stable?

[00:01:22] Speaker 02:
Like, what are you saying here?

[00:01:24] Speaker 04:
No, I'm not saying that.

[00:01:27] Speaker 04:
I'm saying that I'll take the context approach of the patent office, which is that 101 should be put in the same buckets as 102 and 103 as applied to the recapture rule.

[00:01:48] Speaker 04:
And I think if you are going to extend

[00:01:53] Speaker 04:
101 to fall under the recount rule, then there should be some clarification when it applies.

[00:02:02] Speaker 04:
And I don't think the facts support that for this particular appeal.

[00:02:10] Speaker 01:
Counsel, I'd like to follow up on Judge Cunningham's question.

[00:02:15] Speaker 01:
So the policy behind reissue recapture I think is one of public notice that if a patent applicant during prosecution

[00:02:27] Speaker 01:
amends a claim to overcome a rejection and have their application allowed, that they shouldn't be able to use the vehicle of reissue in order to recapture that which they gave up.

[00:02:41] Speaker 01:
And so with that, why is it, I have empathy and I surely understand your point that 101 law has changed quite a bit in the last decade or so.

[00:02:52] Speaker 01:
But that said, with the public notice function, why should there not be a public notice function even where someone makes a mistake, for example, and amends their claim

[00:03:08] Speaker 01:
in a way that they wish they hadn't.

[00:03:11] Speaker 01:
I mean, that happens in these prior art situations, as well.

[00:03:14] Speaker 01:
I mean, a reissue is naturally, in every case, going to be a situation where the patent owner wishes they had done something different, or they wouldn't be filing a reissue application.

[00:03:26] Speaker 04:
I think that is covered in Inri Yoman, where there's an extensive discussion of the legislature's intent behind a recapture rule.

[00:03:39] Speaker 04:
And you identify this public notice.

[00:03:43] Speaker 04:
It's very clear, in fact, that he even discusses that in the congressional record that there's a two-year period within which broadening reissue may be applied for.

[00:03:59] Speaker 04:
And there is notice to the public that they're aware that broadening reissues are available.

[00:04:07] Speaker 04:
as well as practitioners.

[00:04:09] Speaker 04:
So I disagree with that somehow there's no public notice in this situation if you were to... What do you think is the policy behind reissue recapture?

[00:04:22] Speaker 04:
I think it's stated that it's correct errors made during prosecution in the primary one of the situation here is where the patent

[00:04:36] Speaker 04:
applicant or inventor claimed less than he or she had the right to claim.

[00:04:43] Speaker 04:
And that's clearly the case here because the result of the... But what is the policy behind reissue recapture?

[00:04:51] Speaker 01:
You just stated the policy behind reissues, I think.

[00:04:54] Speaker 01:
But why is it that in some circumstances, some alleged errors

[00:04:59] Speaker 01:
aren't in fact errors that can be corrected with reissue because they recapture subject matter that the inventor gave up during prosecution.

[00:05:16] Speaker 04:
So if you kind of look at it from a broader context, the argument is that this subject matter was given up.

[00:05:29] Speaker 04:
That would apply to all 101 rejections.

[00:05:33] Speaker 04:
Amendments to address 101 rejections, because you would always be making an amendment, and the amendment would be, by its nature, would be narrowing the claim.

[00:05:45] Speaker 04:
And so I think to apply a wholesale rule, especially apply it retroactively in view of clear rules in the MPEP,

[00:05:58] Speaker 04:
that don't cover it.

[00:05:59] Speaker 04:
And in fact, in the re-hearing decision itself, the board said this is a case of first impression.

[00:06:14] Speaker 04:
And I'm going to quote from their decision on Hispanics page 31.

[00:06:22] Speaker 04:
The MPEP reference is case law in which a court of reply or capture rule to amendments

[00:06:27] Speaker 04:
made a response to prior rejections.

[00:06:29] Speaker 04:
Yet when we review the case law as a whole, we see the purpose and intent.

[00:06:33] Speaker 04:
And the recapture does not call for so limited an interpretation.

[00:06:37] Speaker 01:
Mr. Burnett?

[00:06:38] Speaker 01:
Yes.

[00:06:38] Speaker 01:
I don't think I've heard an answer to my question yet.

[00:06:41] Speaker 01:
And I just want to make sure.

[00:06:42] Speaker 01:
I mean, it's a really important issue.

[00:06:44] Speaker 01:
As you mentioned just now, it's an issue of first impression.

[00:06:46] Speaker 01:
So I want to make sure I get it right.

[00:06:49] Speaker 01:
What do you think the policy is behind reissue recapture?

[00:06:52] Speaker 01:
Not behind reissues, but why do we have a reissue recapture doctrine?

[00:06:57] Speaker 04:
I think that the policy is as the applicant has acknowledged that subject matter within a claim, any claims, is not patentable over prior art.

[00:07:13] Speaker 04:
And the purpose of the recapture rule is to prevent later on the applicant or the applicant listening to the prosecution from taking

[00:07:26] Speaker 04:
taking that back and say, no, we're going to put the limitations that were taken out, we're going to put them back in, and use those in the process.

[00:07:37] Speaker 02:
Council, why wouldn't that same purpose apply in the one-on-one context, though?

[00:07:40] Speaker 02:
I heard what you just described.

[00:07:42] Speaker 02:
Tell me why that would not apply in one-on-one, in your view.

[00:07:45] Speaker 04:
OK, I'll do it.

[00:07:47] Speaker 04:
In my particular, or in Mr. Brasley's McDonald's case,

[00:07:53] Speaker 04:
The reason it shouldn't apply is because this was not a situation where the attorney representing the appellant had much of a choice.

[00:08:07] Speaker 04:
It was dictated by the examiner that these claims need to have a reference to a machine or transformation.

[00:08:16] Speaker 04:
And since transformation didn't apply, the claims were amended to add a machine, which was a process.

[00:08:22] Speaker 01:
In reissue recapture with respect to where an applicant has amended his or her claims in view of prior art, is there an exception where the patent examiner has insisted upon the claim amendment and it turns out it wasn't necessary to distinguish the prior art?

[00:08:45] Speaker 04:
No, not in that case.

[00:08:47] Speaker 04:
That's as far as my understanding of the baseline.

[00:08:58] Speaker 04:
In that case, it doesn't matter whether the rejection was proper and proper, and I think I see where you're going with this.

[00:09:11] Speaker 04:
We have argued that in this case, the rejection wasn't even proper at the time it was made, because Bielski versus Apple, the Supreme Court had indicated overruled

[00:09:26] Speaker 04:
In Ray Bilsky, he said the machine or transformation test is not the sole test.

[00:09:32] Speaker 02:
Also, can you address the NBO Labs case?

[00:09:35] Speaker 02:
In that case, there's some language about surrendered territory that was already covered by prior art or otherwise unpatentable.

[00:09:45] Speaker 02:
Wouldn't that otherwise unpatentable language cover something like 101?

[00:09:50] Speaker 04:
It's unclear to me.

[00:09:53] Speaker 04:
That's the only reference in that case.

[00:09:55] Speaker 04:
In fact, there's 13 or 11, excuse me, references in the MBO laboratories addressing amendments in view of prior art.

[00:10:09] Speaker 04:
And that's the only instances where it says they're otherwise unpatable.

[00:10:15] Speaker 04:
And to be honest, I'm not sure how to interpret that because they don't

[00:10:20] Speaker 04:
There's no further articulation on what they're referring to.

[00:10:24] Speaker 01:
Mr. Burnett, I think your argument is that reissue recapture doesn't apply here because there's been an intervening change in law.

[00:10:33] Speaker 01:
That's what I think you're arguing.

[00:10:34] Speaker 01:
Do you have any cases at all that support the idea that when there's an intervening change in law, reissue recapture shouldn't apply?

[00:10:42] Speaker 01:
Or even, I guess I suppose, an analogous doctrine that might apply either in patent law or in some other area of law?

[00:10:54] Speaker 04:
I don't have any specific case that I can cite to.

[00:11:00] Speaker 04:
I guess I would kind of look at it.

[00:11:04] Speaker 04:
An issue, I think a broader issue in terms of this being judge-made consideration in view of equity and fairness is that

[00:11:19] Speaker 04:
that the applicant followed the rules throughout prosecution, laid out by the Patent Office itself, and in view of the case law and statutory provisions for patents.

[00:11:32] Speaker 04:
And now, after following the case law in the MPEP, it's, well, we're going to

[00:11:44] Speaker 04:
we're going to retroactively apply something new rules and don't exist.

[00:11:51] Speaker 04:
So I guess I do have a request and the request would be if there is a decision that is in the favor of the Patent Office that you make a request to Patent Office to change the MPEP.

[00:12:07] Speaker 04:
I know that's an unusual request

[00:12:10] Speaker 04:
The reality is I don't want to see anybody else have to go through and follow the rules that are explicitly laid out and then years later get a rejection on an appeal and waste years of effort.

[00:12:28] Speaker 00:
Let me just ask you what's been really troubling me throughout all of this.

[00:12:33] Speaker 00:
What are the alternatives?

[00:12:35] Speaker 00:
Let's accept the premise that an error that you've discovered that more was yielded than was necessary.

[00:12:45] Speaker 00:
If the patent hasn't yet issued, I suppose it could be withdrawn from issue and a continuation filed to retrieve.

[00:12:56] Speaker 00:
Is it possible to retrieve some of the errors?

[00:13:02] Speaker 04:
No, that was not possible in this instance.

[00:13:05] Speaker 04:
There was no pending continuation at the time, and that's why it brought me in.

[00:13:11] Speaker 01:
The only application you have pending is this reissue application.

[00:13:14] Speaker 01:
So no continuations at all?

[00:13:17] Speaker 04:
That's correct.

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

[00:13:19] Speaker 00:
Well, and it's pending because the principal patent is issued.

[00:13:27] Speaker 00:
And just thinking about what I can see advantages to following this path, because although a reissue, I think you have to offer to surrender the original patent, but if the reissue is denied, you still have your patent.

[00:13:46] Speaker 00:
Whereas if it's not issued in the first place, you don't, but in trying to understand

[00:13:55] Speaker 00:
the opportunities for correction of an authentic error that warrants correction.

[00:14:02] Speaker 00:
Is this about the only path that's available?

[00:14:07] Speaker 04:
It's the only path available that I'm aware of under these circumstances.

[00:14:12] Speaker 00:
All right.

[00:14:13] Speaker 00:
Let's hear from the other side, and we'll save you rebuttal time.

[00:14:17] Speaker 03:
Thank you.

[00:14:21] Speaker 03:
Good morning, Your Honors.

[00:14:22] Speaker 03:
May it please the court.

[00:14:23] Speaker 03:
I'd like to touch on the public policy issue and the public notice issue that your honors had brought to the forefront.

[00:14:31] Speaker 03:
The public policy issue of the recapture rule is really to protect the public in a situation like here where a patent applicant has narrowed the scope of their claim either through an amendment or through arguments, and they let that patent issue, thereby surrendering claim scope.

[00:14:49] Speaker 03:
The whole purpose of the recapture rule is a matter of equity and fairness.

[00:14:54] Speaker 03:
And it's only fair once that patent issues and they haven't corrected that mistake, they haven't filed a continuation application to preserve the right to broaden the claim.

[00:15:04] Speaker 03:
The public is entitled to rely on the claim scope.

[00:15:06] Speaker 03:
And this court's recapture rule states pretty clearly when an applicant surrenders claim scope during prosecution in order to obtain claim allowance.

[00:15:18] Speaker 00:
But isn't the purpose of reissue to find a way of correcting a mistake?

[00:15:25] Speaker 03:
That is the purpose, but it's not a panacea for correcting all kinds of mistakes.

[00:15:30] Speaker 03:
It's not a way to conduct a novo continuation practice.

[00:15:35] Speaker 03:
It's limited in scope, yet the file is within two years.

[00:15:39] Speaker 03:
And it's only to correct errors during prosecution.

[00:15:43] Speaker 00:
So what else is available to correct a mistake, such as the mistake that we're told, let's just accept that they made a mistake?

[00:15:54] Speaker 03:
Sure.

[00:15:55] Speaker 03:
So I think if you just start from the beginning in prosecution, when the 101 rejection was made, the applicant here had some choices.

[00:16:06] Speaker 03:
They could contest that rejection to the examiner for all the reasons that McDonald had argued in his briefing to this court.

[00:16:13] Speaker 03:
He could have appealed that rejection to the board and then subsequently appealed it to this court.

[00:16:19] Speaker 03:
Instead, he chose to acquiesce to that rejection and narrow the scope of his claims by amending

[00:16:25] Speaker 03:
So that was a deliberate decision.

[00:16:27] Speaker 03:
Now from that time forward, that wasn't set in stone.

[00:16:29] Speaker 03:
The applicant still had some time during prosecution until that patent issued.

[00:16:34] Speaker 03:
I mean, until they paid the issue fee, they have a chance to review their claims, determine whether they cover their preferred embodiments, provide the proper protection.

[00:16:43] Speaker 03:
And at that point, they could have either corrected their claims and fixed that mistake

[00:16:48] Speaker 03:
Or if they thought there was any potential problem and they might want to broaden the scope later on down the road, they could have filed a continuation application to preserve that right.

[00:16:56] Speaker 03:
Instead, they didn't do that.

[00:16:58] Speaker 03:
They let the claims issue.

[00:16:59] Speaker 03:
And at that point, the public has a right to, they're going to review this prosecution history.

[00:17:04] Speaker 03:
If they're a competitor in this space and they're doing search technology, they should be able to rely on that finality when the patent issues.

[00:17:13] Speaker 03:
There's no continuation.

[00:17:15] Speaker 03:
And no continuing applications that are filed, that's a public record.

[00:17:18] Speaker 01:
So counsel, you're saying that even though there is an opportunity to file a reissue, there is an exception that exists already, the reissue recapture rule, right, which says that in that scenario, if it's, we could argue it from the point of view of the appellant, he says that that rule is that

[00:17:36] Speaker 01:
If you're distinguishing prior art and you chose to amend your claims to distinguish prior art, that you cannot recapture that which you gave up, even though there is a rule to correct mistakes.

[00:17:45] Speaker 01:
The doctrine is that that's not a kind of mistake that can be corrected, right?

[00:17:51] Speaker 03:
Exactly.

[00:17:52] Speaker 01:
And so how do you respond to the argument that, well, it's different for 101.

[00:17:56] Speaker 01:
And in 101, in particular, there has been a lot of changes in the law.

[00:18:00] Speaker 01:
There's been an intervening change in the law.

[00:18:02] Speaker 01:
And does that in some way make it so it is a correctable error now?

[00:18:07] Speaker 01:
Because the public should be familiar with the fact that the law has changed.

[00:18:12] Speaker 03:
I don't think so for a few reasons.

[00:18:15] Speaker 03:
First of all, the law is always evolving.

[00:18:18] Speaker 03:
in areas in 101 and 103, for example.

[00:18:23] Speaker 03:
In earlier years, we had the teaching suggestion motivation test, then KSR came around.

[00:18:27] Speaker 03:
There's never any argument, and I've never seen a case hold that the recapture rule, the scope of the recapture rule kind of changes because of an intervening change in the law.

[00:18:36] Speaker 03:
And in this case, there really wasn't an intervening change.

[00:18:39] Speaker 03:
The change they're articulating is the Bilsky case, but that came out six months before all of this amendment stuff happened.

[00:18:47] Speaker 03:
Um, so I don't think there, the mistake was based on an intervening change in the law.

[00:18:52] Speaker 03:
Um, and from a public policy perspective, I don't think that there's a reason basis to carve out 101 and treat narrowing amendments made to overcome a 101 rejection any differently than a narrowing amendment made to overcome a 102 or a 103 rejection.

[00:19:11] Speaker 00:
You're telling us that the statute is wrong.

[00:19:15] Speaker 00:
The statute permits within a fixed amount of time, a broadening issue, a broadening reissue, if in fact there was an error and you claimed less than you're entitled to.

[00:19:28] Speaker 00:
There's a time limit.

[00:19:30] Speaker 00:
It's quite tight.

[00:19:31] Speaker 00:
It's rigorously produced, but it's there in the statute.

[00:19:35] Speaker 00:
But what I hear you saying, as a matter of public policy, the public sees what you got, that ends it.

[00:19:43] Speaker 03:
I think the statute says it's a limited scope of an ability to correct an error.

[00:19:50] Speaker 03:
And it's got to be an error, at least according to this court's precedent, doesn't include an intentional narrowing amendment that's correct.

[00:19:59] Speaker 00:
The error is that you claimed less than you were entitled to.

[00:20:04] Speaker 00:
That's your error.

[00:20:06] Speaker 03:
Yeah.

[00:20:07] Speaker 03:
And that is a sufficient error if the claims haven't been amended.

[00:20:10] Speaker 03:
These were original claims, and they had never been amended during prosecution.

[00:20:14] Speaker 03:
That could be an error that you could try to correct.

[00:20:18] Speaker 00:
That's what the statute says.

[00:20:19] Speaker 00:
It's not for us to say, no, it's only certain kinds of error that you can correct.

[00:20:27] Speaker 00:
The statute gives you a limited amount of time to correct an error.

[00:20:33] Speaker 00:
Shouldn't that be interpreted

[00:20:35] Speaker 00:
Fairly, equitably, so that if there is, we can argue about whether this is a correctable error.

[00:20:42] Speaker 00:
That's a separate issue.

[00:20:44] Speaker 00:
But that isn't what I hear you saying.

[00:20:46] Speaker 00:
I hear you taking a much more rigorous line, which has not been until now my understanding of the purpose of the reissue statute.

[00:20:59] Speaker 00:
Their error is human.

[00:21:03] Speaker 00:
And errors?

[00:21:04] Speaker 00:
No, I agree.

[00:21:05] Speaker 03:
Errors.

[00:21:07] Speaker 03:
Yeah, and I apologize.

[00:21:08] Speaker 03:
I'm not answering your question to your satisfaction.

[00:21:10] Speaker 03:
My understanding is the errors that are typically corrected through reissue are situations where the attorney that's prosecuting the application doesn't understand the full scope of the invention.

[00:21:26] Speaker 03:
And the claims as originally filed don't cover the full scope of the invention.

[00:21:32] Speaker 03:
But then interpreting that statute, this court has created this judge-made, equitable, recapture rule doctrine that limits the scope of errors that can be corrected.

[00:21:47] Speaker 03:
And one error that is not allowed to be corrected is when the applicant intentionally or deliberately surrenders claim scope, either through a claim amendment

[00:21:57] Speaker 01:
I'm sorry, can you give us some names of these cases that you're referring to for this doctrine?

[00:22:05] Speaker 03:
Yeah, MBO Labs is one we cite too prominently.

[00:22:11] Speaker 03:
Inray Clement is another one.

[00:22:14] Speaker 03:
Inray Hester is another important case.

[00:22:19] Speaker 03:
And the Hester decision is a really good one in particular because

[00:22:23] Speaker 03:
In discussing the history of the recapture rule, it compares it to the doctrine of prosecution history estoppel, which applies for any reason related to patentability.

[00:22:34] Speaker 03:
And it finds that the estoppel underpinnings of the recapture rule are quite similar to prosecution history estoppel.

[00:22:41] Speaker 01:
Do you know if the reissue recapture rule predates the creation of this court?

[00:22:47] Speaker 01:
Are there CCPA cases?

[00:22:50] Speaker 01:
that discuss it?

[00:22:53] Speaker 01:
Or was it first created by this court?

[00:22:56] Speaker 01:
Do you know?

[00:22:58] Speaker 03:
So yeah, that's interesting.

[00:22:59] Speaker 03:
That actually came up during my moves.

[00:23:01] Speaker 03:
And so I did a little digging into that issue.

[00:23:03] Speaker 03:
And the earliest case is actually a Supreme Court case.

[00:23:08] Speaker 03:
And I've got it here.

[00:23:09] Speaker 03:
It's Shepard v. Carrigan, 116 U.S.

[00:23:15] Speaker 03:
593.

[00:23:17] Speaker 03:
That's a Supreme Court case from 1886.

[00:23:20] Speaker 03:
And here's the relevant quote, I can just read it for you.

[00:23:23] Speaker 03:
It says, quote, if an applicant in order to get his patent accepts one with a narrower claim than that contained in his original application, he is bound by it.

[00:23:33] Speaker 03:
If dissatisfied with the decision rejecting his application, he should pursue his remedy by appeal.

[00:23:39] Speaker 03:
Under the circumstances of this case, the inventor could not even get a reissue based on the broader claim she had abandoned.

[00:23:47] Speaker 03:
And so that's one example.

[00:23:49] Speaker 03:
There's some other Supreme Court cases in the 1880s, Legate v. Avery is another one, and Mann v. Harwood, those are both from 1879 and 1884.

[00:23:59] Speaker 03:
So the equitable underpinning.

[00:24:01] Speaker 02:
Can you give us those citations just for completeness?

[00:24:05] Speaker 03:
Yeah, I do.

[00:24:06] Speaker 03:
Mann v. Harwood.

[00:24:18] Speaker 03:
is 12 U.S.

[00:24:20] Speaker 03:
354, and legate behavior is 101 U.S.

[00:24:30] Speaker 03:
256, and that's from 1879.

[00:24:34] Speaker 03:
And those cases also talk about disclaimer, like essentially if you have disclaimed patent scope either through canceling claims to different inventions or otherwise disclaiming

[00:24:48] Speaker 03:
you know, claim scope, you'd be essentially told the public that you're not going to be claiming that, and your equitable need is stopped from trying to recapture that subject matter.

[00:24:59] Speaker 03:
So the equitable principles... Oh, I'm sorry.

[00:25:02] Speaker 02:
I didn't mean to interrupt if you had one more thing on that.

[00:25:05] Speaker 03:
I was just going to point out that the equitable underpinnings go quite a ways back.

[00:25:11] Speaker 02:
Okay.

[00:25:11] Speaker 02:
Thank you.

[00:25:13] Speaker 02:
On the MPL Labs case, so that is one case I was talking about with your opposing counsel.

[00:25:18] Speaker 02:
I know it has an otherwise unpatentable language that I discussed with him, but there are a number of our cases that really just focus on language more so prior art rejection sort of language.

[00:25:30] Speaker 02:
I'd love for you to talk about our cases and how you might see those cases or what your thoughts are there.

[00:25:38] Speaker 03:
Yeah.

[00:25:39] Speaker 03:
My thoughts are that generally in

[00:25:42] Speaker 03:
in recent history at least, these recapture rule cases have come up in the context of where an amendment was made to narrow the scope of the claims to overcome prior art.

[00:25:52] Speaker 03:
And so a lot of the cases that discuss the doctrine, they start out by describing the equitable doctrine kind of broad terms, like it doesn't MBO lapse, where it says the rule applies to surrender territory that was already covered by prior art or otherwise unpackable.

[00:26:07] Speaker 03:
Similar statements are made in Ray Clement and Hester.

[00:26:10] Speaker 03:
And then when they start tackling

[00:26:12] Speaker 03:
the specific facts of the case, they do point out that there was an amendment made to overcome prior heart because that was the facts of the case.

[00:26:21] Speaker 03:
But I haven't seen any statement in a case that really expressly limited the scope of the recapture rule to just prior heart rejections.

[00:26:31] Speaker 03:
In fact, those cases start out by saying it's a broad equitable principle.

[00:26:36] Speaker 03:
Hester says it's

[00:26:37] Speaker 03:
quite similar to the equitable rule in prosecution history, estoppel, which applies to any reason related to patentability.

[00:26:44] Speaker 03:
And if you look at that Kerrigan, that Supreme Court case I had mentioned, that case also talks about it just applying broadly if you narrow the scope of your claim to obtain allowance.

[00:26:57] Speaker 03:
And I think from a fairness standpoint, it also makes a lot of sense.

[00:27:00] Speaker 01:
Mr. McBride, I wanted to ask you.

[00:27:02] Speaker 01:
I appreciate what your argument is.

[00:27:05] Speaker 01:
The only case that I thought that got closer to the issue was Cubist Pharmaceutical v. Hespera.

[00:27:12] Speaker 01:
And in that case, I think the claims were amended to overcome a 112 rejection.

[00:27:18] Speaker 01:
And one of the things this court said is that the recapture rule applies only if the patentee surrendered subject matter in order to overcome a prior rejection.

[00:27:27] Speaker 01:
How do you distinguish Cubist?

[00:27:30] Speaker 03:
Yeah, that's a good point, Your Honor.

[00:27:33] Speaker 03:
I believe that case is probably the strongest case for McDonald, but I think it can be distinguished.

[00:27:39] Speaker 03:
I think the important way to look at that case is this court said there was no broadening in the reissue.

[00:27:46] Speaker 03:
The reissue claims were actually narrower in scope.

[00:27:49] Speaker 03:
And second of all, there was no up claim scope surrender during prosecution.

[00:27:54] Speaker 03:
As you mentioned,

[00:27:55] Speaker 03:
the claim was canceled to overcome a 112 rejection.

[00:27:59] Speaker 03:
And that was, in fact, an indefinite rejection, where the claim scope was unclear.

[00:28:04] Speaker 03:
And so by canceling that claim and then, through reissue, going after narrower claims, there really wasn't any attempt to recapture broader subject matter.

[00:28:17] Speaker 03:
And so I think that statement saying that there was no surrender to overcome prior art, it's really the focus to be on.

[00:28:23] Speaker 03:
There was just no surrender in that case.

[00:28:25] Speaker 03:
And it's true there was no surrender to overcome our heart, but there was no surrender, period.

[00:28:30] Speaker 01:
Would you say that that was just a sentence that's typically included in these cases?

[00:28:37] Speaker 01:
Or would you almost dicta?

[00:28:39] Speaker 01:
Or would you say that it actually was applied?

[00:28:42] Speaker 03:
I would say it was more like dicta in this case.

[00:28:44] Speaker 03:
If you look at a lot of these other cases where they talk about the broad equitable principle and how the recapture rule applies to any surrender of claim scope, and then when they get

[00:28:53] Speaker 03:
They do make statements about how there was no surrender here to overcome prior parts.

[00:28:58] Speaker 03:
I think that's just dictated in this case.

[00:29:00] Speaker 03:
It wasn't necessary to decide the Cubist case.

[00:29:03] Speaker 03:
And when you read it in the context of that case and in the body of case law from this court, in the Supreme Court, I think a fair reading of it is really just focusing on the surrender language in that particular sentence.

[00:29:16] Speaker 01:
And then one last question I have for you, which is you mentioned that Mr. Burnett was citing Bilski.

[00:29:23] Speaker 01:
and that Bilsky issued six months before the amendment.

[00:29:26] Speaker 01:
But there are other cases like Alice, for example, right?

[00:29:29] Speaker 01:
I mean, Alice probably is more on point for the idea that you wouldn't no longer.

[00:29:36] Speaker 01:
At least it's on point for the idea that maybe adding a processor doesn't matter anymore.

[00:29:44] Speaker 03:
That's very true.

[00:29:45] Speaker 03:
And there are changes in the law like Alice and Mayo and other 101 cases.

[00:29:51] Speaker 03:
And there's a few changes in the law with 102 and 103 and other 112 as well.

[00:29:57] Speaker 03:
But I've just yet to see a case that distinguished the applicability of the recapture rule based on an intervening change in the law.

[00:30:05] Speaker 03:
I think the overarching concern is you have to look at, the public is looking at the prosecution history.

[00:30:11] Speaker 03:
they're looking to see was there an intentional surrender of claim scope.

[00:30:14] Speaker 03:
And you can determine that whether there's a change in the law or not.

[00:30:18] Speaker 03:
And if you're prosecuting your application, you think there is a mistake in the law, or you don't agree with the law, you can challenge that.

[00:30:24] Speaker 03:
You can appeal to the board.

[00:30:25] Speaker 03:
You can appeal to this court.

[00:30:27] Speaker 03:
And if you think the law may be changing, you file a continuation application to preserve your right to amend your claims and recapture that claim scope later on if there is a change in the law.

[00:30:35] Speaker 03:
But when you choose to let your patent issue with the narrower claims,

[00:30:39] Speaker 03:
that you've intentionally narrowed the scope of, you're kind of barred from then recapturing that subject matter under the recapture rule.

[00:30:51] Speaker 00:
Anything else?

[00:30:54] Speaker 00:
Thank you.

[00:30:54] Speaker 00:
Thank you, Mr. McBride.

[00:30:56] Speaker 04:
Thank you, Your Honors.

[00:30:59] Speaker 00:
We'll have rebuttal from Mr. Burnett.

[00:31:11] Speaker 00:
OK.

[00:31:13] Speaker 00:
Are you unmuted?

[00:31:16] Speaker 00:
We can't hear you.

[00:31:18] Speaker 00:
Are you muted?

[00:31:19] Speaker 04:
I'm sorry.

[00:31:20] Speaker 04:
I'm sorry.

[00:31:21] Speaker 04:
There we are.

[00:31:22] Speaker 04:
I'd like to address the public notice argument.

[00:31:26] Speaker 04:
It was just me.

[00:31:32] Speaker 04:
Congress has weighed that consideration as part of the interest when they promulgated the granny reissue statute.

[00:31:41] Speaker 04:
and it was considered in view of the patent rights, and they favored it allowing the patent to correct its error through a broadener issue.

[00:31:51] Speaker 04:
And as this court has explained, the statute is remedial in nature based on fundamental principles as equity and fairness and should be construed liberally.

[00:32:04] Speaker 04:
Furthermore, getting back to the public notice,

[00:32:09] Speaker 04:
congressional record identified that the reissues to the statute requires a patent need to file for broadening the reissue within two years.

[00:32:17] Speaker 04:
And as a result, the public is on notice for two years following issuance of patents, that the patent can be broadened to recapture matter dedicated to the public through error.

[00:32:27] Speaker 04:
Other than the two-year period, the public can definitely rely on the scope of the patent claims.

[00:32:32] Speaker 04:
So the director's office is arguing that somehow

[00:32:38] Speaker 04:
a patent practitioner or other person is going to look at the prosecution history of an application and somehow say, oh, wow, it looks like they made this 101 amendment here.

[00:32:55] Speaker 04:
So based on that, I don't have to worry about any claims that might issue in a broadener issue.

[00:33:02] Speaker 04:
And I disagree wholeheartedly with that.

[00:33:08] Speaker 04:
Another thing I want to tie back to this, in terms of equity and fairness, the consideration of the MPEP rules.

[00:33:17] Speaker 04:
You mentioned CCPA cases.

[00:33:22] Speaker 04:
And I'd like to briefly, in the case that's cited by the director's office in terms of the assertion that MPEP guidelines are not binding on this court, the full quote

[00:33:37] Speaker 04:
and this is from Mary Fisher, is that NPEP guidelines are not binding on this court, but may be given judicial notice to the extent that they do not conflict with the statute.

[00:33:49] Speaker 04:
I'd like to identify a couple of CCPA cases.

[00:33:52] Speaker 04:
One is the application of Pagan.

[00:33:57] Speaker 04:
It's 387, federal second 398, 401.

[00:34:01] Speaker 04:
And what is stated in that case is

[00:34:05] Speaker 04:
We take judicial notice of the fact that the manual is used frequently by patent lawyers and agents in advising applicants and preparing various papers filing the patent office, also the fact that examiners frequently cite to it.

[00:34:19] Speaker 04:
Under these circumstances, we feel that an applicant should be entitled to rely on not only statutes and the rules of practice, but also by the provisions in the MPEP in the prosecution of his patent application.

[00:34:33] Speaker 04:
and then the court cites in a footnote uh... to uh... in a free uh... we have here observed that the express provisions of mpvp set forth an established patent office policy on which applicants for patents are entitled to rely on good faith in orderly conduct of their business in the patent office so the position that the appellate takes is that

[00:35:03] Speaker 04:
parent follow the rules.

[00:35:04] Speaker 04:
The rules are laid out very clearly.

[00:35:07] Speaker 04:
There is no rule.

[00:35:08] Speaker 04:
It's admitted by the office in the MPEP that says anything about recaptures applying to 101.

[00:35:26] Speaker 04:
Kind of as a follow-up, I think both

[00:35:32] Speaker 04:
But parties look at this and say that there's no clear precedent on this.

[00:35:37] Speaker 04:
And I request that a presidential opinion be issued so that parties in the future are apprised of how to deal with this situation.

[00:35:50] Speaker 02:
Let me just ask one housekeeping question.

[00:35:52] Speaker 02:
Do you agree that the argument on the inventor reissue declaration rises and falls with how we roll on the overall recapture issue?

[00:36:02] Speaker 02:
Yes, I do.

[00:36:02] Speaker 02:
OK.

[00:36:03] Speaker 00:
Thank you.

[00:36:09] Speaker 00:
OK.

[00:36:09] Speaker 00:
Any more questions for counsel?

[00:36:11] Speaker 00:
Anything else?

[00:36:14] Speaker 04:
OK.

[00:36:14] Speaker 04:
No.

[00:36:17] Speaker 00:
All right.

[00:36:17] Speaker 00:
Do you have a last word for us?

[00:36:21] Speaker 04:
No, I don't.

[00:36:22] Speaker 04:
I appreciate the time before the court.

[00:36:25] Speaker 00:
OK.

[00:36:25] Speaker 00:
Thank you.

[00:36:27] Speaker 00:
Thanks for all.

[00:36:28] Speaker 00:
The case is taken under submission.