[00:00:00] Speaker 02:
Next case is in race saw stop holding 2021 2161 Thank you.

[00:00:15] Speaker 02:
Good morning.

[00:00:15] Speaker 02:
Mr. Fanning, please proceed.

[00:00:18] Speaker 03:
Thank you and may it please the court this appeal asks the question whether the judiciary has the authority to adopt a

[00:00:28] Speaker 03:
a doctrine that imposes an additional requirement of patentability.

[00:00:35] Speaker 02:
Mr. Fanning, we don't answer questions.

[00:00:38] Speaker 02:
We decide cases.

[00:00:40] Speaker 03:
Very good.

[00:00:40] Speaker 02:
And isn't there precedent on the only issue that you're raising before us?

[00:00:48] Speaker 03:
There is precedent.

[00:00:48] Speaker 03:
The Abbey case, of course, says that the doctrine of obviousness-type double patenting continues after the URAA amendments.

[00:00:57] Speaker 03:
submits that no case has ever addressed the question of whether the fundamental issue of whether the judiciary can adopt such a doctrine has been addressed.

[00:01:11] Speaker 03:
As far as we've been able to tell, no case has addressed that.

[00:01:15] Speaker 03:
So before you can decide, you know, does the doctrine of audiences type double patent continue to apply after the URAA amendments or something?

[00:01:25] Speaker 03:
You have to decide whether the doctrine itself is valid.

[00:01:29] Speaker 03:
Why should we decide this?

[00:01:31] Speaker 03:
Because it's preventing inventors from getting patents that Congress says they should get.

[00:01:36] Speaker 03:
Shouldn't Congress decide this?

[00:01:38] Speaker 03:
I think Congress has.

[00:01:39] Speaker 03:
That's the point.

[00:01:40] Speaker 00:
The doctrine... Has Congress directed us to follow a certain path?

[00:01:46] Speaker 03:
As I understand the question though, although Congress has said in the statutes 101, 102, and 103, a patent shall be granted

[00:01:55] Speaker 03:
if, and if, and if, and none of those.

[00:01:58] Speaker 03:
They all exclude the doctrine of obviousness type double patenting.

[00:02:02] Speaker 03:
It's an extra thing.

[00:02:02] Speaker 03:
And I know it's uncomfortable.

[00:02:04] Speaker 01:
The 52 Patent Act added Section 253, which provided for terminal disclaimers, which the CCPA over and over again said the purpose of that was to accommodate non-statutory double patenting.

[00:02:19] Speaker 01:
Yeah.

[00:02:20] Speaker 01:
So Congress obviously is fully aware of what you're calling a judge-made doctrine.

[00:02:25] Speaker 03:
Yeah, I think Congress is aware.

[00:02:27] Speaker 03:
Now, as far as I've been able to determine, I haven't seen any legislative history or congressional history saying that.

[00:02:32] Speaker 03:
I know the CCPA, and I think this court has recognized that 253, is it two or something, the term of disclaimer portion, the bottom portion of that, is used to respond to obviate, if that's the right word, a double patent interjection, obviously it's not a double patent interjection.

[00:02:51] Speaker 03:
But it still seems,

[00:02:54] Speaker 03:
This contrary statute, at least that's what Softop believes.

[00:02:58] Speaker 01:
You know, it says... You're familiar with Zickendrot.

[00:03:02] Speaker 01:
I am.

[00:03:03] Speaker 01:
The CCPA thing.

[00:03:03] Speaker 01:
You cited it in your blue brief.

[00:03:05] Speaker 01:
I did.

[00:03:05] Speaker 01:
And you cited Judge Rich's concurrence in particular.

[00:03:09] Speaker 01:
And Judge Rich's concurrence specifically points out that before the 52 Patent Act, there really wasn't an obviousness type

[00:03:20] Speaker 01:
patentability condition in the patent statute before 1952.

[00:03:25] Speaker 01:
And so all of that obviousness law was judge-made law.

[00:03:33] Speaker 01:
I guess your position would be that all of that pre-52 Act law was invalid.

[00:03:41] Speaker 03:
Yeah, you know, that's a tough one.

[00:03:42] Speaker 03:
I think that's right, though.

[00:03:45] Speaker 01:
So the Supreme Court just went off the rails.

[00:03:49] Speaker 01:
with its Pre-52 Act Obviousness Law.

[00:03:53] Speaker 01:
Jump the tracks, in the ditch, upside down, wheels spinning in the air, smokes going up into the sky.

[00:04:00] Speaker 03:
Well, I guess technically I will say yes to that because I want to be consistent.

[00:04:07] Speaker 03:
But if you look, our system is based on Congress.

[00:04:10] Speaker 01:
Doctrine of Equivalence also an invalid doctrine?

[00:04:14] Speaker 03:
I don't know.

[00:04:14] Speaker 03:
I haven't thought about that one.

[00:04:16] Speaker 01:
How about the judge made exceptions to section 101, abstract idea, laws of nature, natural phenomena?

[00:04:25] Speaker 03:
Yeah, those are based in the wording of the statute.

[00:04:28] Speaker 03:
My understanding is that the court interprets the words of 101 and says that's what these things mean, which is, I think, the correct role of the court to interpret the statutes.

[00:04:37] Speaker 03:
But where the statutes are silent.

[00:04:39] Speaker 01:
I believe the courts have said that there's some implicit exception.

[00:04:44] Speaker 01:
There's nothing in the statute

[00:04:47] Speaker 01:
There's nothing grounded in the statute when it comes to the judicial exceptions to Section 101.

[00:04:54] Speaker 03:
There's the words of 101 themselves.

[00:04:55] Speaker 03:
What does it mean to have an article of manufacture?

[00:04:58] Speaker 03:
What does it mean to have a composition of matter?

[00:05:01] Speaker 03:
And so you look at those words, you read the statute and look at those words.

[00:05:04] Speaker 03:
We don't know, so you interpret it.

[00:05:06] Speaker 03:
But for the doctrine of obviousness type double patenting, no such thing.

[00:05:10] Speaker 03:
To the contrary, the Congress has set a scheme and it's preventing SawStop from getting a patent that meets the, you know, SawStop filed a patent application, meets all the statutory requirements, every one, except for this judicially created doctrine.

[00:05:27] Speaker 03:
And now SawStop can't have its patent.

[00:05:31] Speaker 03:
Congress says it can.

[00:05:33] Speaker 03:
The court says it can't.

[00:05:34] Speaker 03:
No, that's saw-stops point.

[00:05:36] Speaker 03:
That's saw-stops point.

[00:05:37] Speaker 00:
You say you can't have your patent.

[00:05:39] Speaker 00:
Who decided that?

[00:05:40] Speaker 00:
Who told you that?

[00:05:41] Speaker 00:
The Patent Office rejected it.

[00:05:42] Speaker 00:
And are you appealing that decision?

[00:05:45] Speaker 00:
Yeah, that's what this is.

[00:05:46] Speaker 00:
That's what this is.

[00:05:46] Speaker 00:
But you're not, you're not, I don't see any merits here.

[00:05:50] Speaker 00:
It's just a legal question you're raising.

[00:05:52] Speaker 00:
You want us to overrule our precedent and to eliminate this, the ODP docker.

[00:05:59] Speaker 03:
Yes, and by doing so then you reverse the PTABS decision based on that docker.

[00:06:05] Speaker 03:
And so SawStop then goes back to the patent office.

[00:06:08] Speaker 03:
The patent office can no longer, you know, do obviously this type of double patenting.

[00:06:13] Speaker 03:
So there's no other bar to patentability for the application.

[00:06:16] Speaker 03:
So the application issues, and SawStop gets the patent.

[00:06:18] Speaker 02:
You say the patent office won't give them a patent, but if they file the terminal disclaimer, they would, right?

[00:06:23] Speaker 02:
That's correct.

[00:06:24] Speaker 02:
Well, they can get a patent.

[00:06:26] Speaker 03:
Yeah, with a terminal disclaimer.

[00:06:28] Speaker 03:
But why should an inventor have to disclaim term that Congress says it should get, is our point.

[00:06:35] Speaker 03:
You know, Congress defines these terms and, you know, if you just read the statute and apply it, these terms can vary.

[00:06:44] Speaker 03:
And that's what Sawstop has done and that's what Sawstop is requesting.

[00:06:49] Speaker 03:
Just let Sawstop have the patent that Congress, the scheme adopted by the Congress says it should have.

[00:06:55] Speaker 03:
And we recognize it's an uncomfortable thing.

[00:06:57] Speaker 03:
You know, it's many, many cases with the Dr. Robinson-Sypedale patent for a long, long time.

[00:07:05] Speaker 00:
You show courage in bringing this issue before us, yes, but I don't see the basis yet.

[00:07:16] Speaker 03:
Yeah, I guess as simple as I can say it, Congress says you can have a patent if you satisfy the conditions of 101, 102, and 103.

[00:07:28] Speaker 00:
None of those... You have interpreted those provisions and along the way the ODP doctrine was created.

[00:07:36] Speaker 03:
My understanding is that the ODP doctrine is separate from those statutes.

[00:07:41] Speaker 03:
It's a judicially created doctrine.

[00:07:45] Speaker 03:
It's not a statutorily created doctrine.

[00:07:48] Speaker 03:
And that's the error.

[00:07:50] Speaker 03:
The court should not, the judiciary should not legislate and add a fourth requirement of patentability.

[00:07:59] Speaker 00:
know that this claim... You want us to rule unconstitutional our past practice with respect to ODP.

[00:08:09] Speaker 03:
Yes.

[00:08:10] Speaker 00:
Yes.

[00:08:11] Speaker 00:
I think, unfortunately... Your argument is this is the domain for Congress and not for the court.

[00:08:18] Speaker 03:
Yes.

[00:08:18] Speaker 03:
And Congress has spoken.

[00:08:22] Speaker 00:
Yes.

[00:08:22] Speaker 00:
And, but Congress did not say... Well, we... Eliminate the ODP.

[00:08:28] Speaker 00:
I've not seen Congress say that, but I have seen Congress say a patent shall be... Under the Irrigway Round Act, when they established the filing date requirements, it could have addressed it.

[00:08:42] Speaker 00:
It was... Congress is aware of the ODP doctrine that this Court has consistently applied for years.

[00:08:49] Speaker 00:
You know, it's... Maybe Congress has already answered your question.

[00:08:53] Speaker 03:
I think it has in our favor, Your Honor, because it could have also

[00:08:58] Speaker 03:
uh, statutorily implemented the ODP.

[00:09:01] Speaker 03:
And in fact, if I remember right, there was a provision proposed

[00:09:07] Speaker 03:
to make obvious type double patenting statutory.

[00:09:10] Speaker 03:
He actually had a provision, and it was rejected.

[00:09:13] Speaker 03:
Instead, Congress didn't do it.

[00:09:15] Speaker 03:
They didn't say anything.

[00:09:16] Speaker 03:
But they don't tell us to stop it.

[00:09:18] Speaker 03:
But they do say to grant a patent if 101, 102, and 103 are met.

[00:09:23] Speaker 03:
And that's the point.

[00:09:24] Speaker 03:
They may not say something, but silence doesn't mean they approve it.

[00:09:30] Speaker 03:
It doesn't mean anything.

[00:09:31] Speaker 00:
I think in this case, it may mean that.

[00:09:33] Speaker 00:
In this case, Congress asked the question that goes to the root of ODP, and that's, what's the critical date of a patent?

[00:09:45] Speaker 00:
Is it when it's filed?

[00:09:47] Speaker 00:
Or is it when it's conceived?

[00:09:50] Speaker 00:
And Congress answered that question, and they didn't tell us.

[00:09:54] Speaker 00:
Therefore, the ODP doctrine doesn't apply anymore.

[00:09:59] Speaker 03:
Yeah.

[00:10:00] Speaker 03:
So I guess I see your point.

[00:10:02] Speaker 03:
And, you know, I've thought about it a lot.

[00:10:04] Speaker 03:
And I can't find, obviously, Congress saying, throw out ODP.

[00:10:10] Speaker 02:
Counsel, you wanted to save quite a bit of time.

[00:10:12] Speaker 02:
I do.

[00:10:13] Speaker 02:
Thank you.

[00:10:14] Speaker 02:
Please understand your point.

[00:10:16] Speaker 02:
And we'll save it for you.

[00:10:17] Speaker 02:
Mr. Lamarco.

[00:10:24] Speaker 02:
All right.

[00:10:25] Speaker 02:
Let us proceed.

[00:10:26] Speaker 02:
Mr. Lamarca, everything you said so far has to be repeated.

[00:10:31] Speaker 02:
But I'm sure you'll be discreet.

[00:10:34] Speaker 04:
I was just apologizing.

[00:10:35] Speaker 04:
I don't know what happened.

[00:10:36] Speaker 04:
I lost the last three or four minutes of the appellant's argument.

[00:10:39] Speaker 04:
But I did catch the first front, most of it.

[00:10:42] Speaker 04:
And I understand from his briefs his point.

[00:10:45] Speaker 04:
And I have a response for the court if you'd like to hear it.

[00:10:49] Speaker 02:
Yes.

[00:10:51] Speaker 04:
As we pointed out in our brief, we believe

[00:10:55] Speaker 04:
The obvious type double patent doctrine is finding precedent not only on the agency, but on this panel as well.

[00:11:02] Speaker 04:
And they don't dispute, the appellant does not dispute the merits of the double patenting rejection.

[00:11:07] Speaker 04:
They don't dispute the claim construction.

[00:11:09] Speaker 04:
They don't dispute the teachings of what's in the claims or that they are indistinct from each other.

[00:11:18] Speaker 04:
The only thing that they do dispute is the law.

[00:11:20] Speaker 04:
They believe that the court

[00:11:22] Speaker 04:
was not authorized to ever create the doctrine.

[00:11:24] Speaker 04:
And I guess their main point, which I heard appellant assert here in their opening argument, is that they don't believe there's any statutory support, that it's somehow outside the statute.

[00:11:36] Speaker 04:
But we did cite in our brief the Abbe case and the Gilead case, and they both give a good historical overview of the doctrine.

[00:11:47] Speaker 04:
And they do point out in Abbe, for example, quote,

[00:11:50] Speaker 04:
While it's often described as a court-created doctrine, obviousness-type double patenting is grounded in the text of the Patent Act.

[00:11:57] Speaker 04:
And I believe what the court was trying to say is that when you look at Section 101, Section 101 provides a patent applicant, but when they become a patentee, a patent for a invention.

[00:12:12] Speaker 04:
They don't get two patents on a invention.

[00:12:15] Speaker 04:
They get a patent on an invention.

[00:12:17] Speaker 04:
And yes, appellant would say, well, but that's

[00:12:20] Speaker 04:
That's identical double patting.

[00:12:22] Speaker 04:
That's statutory.

[00:12:23] Speaker 04:
We're talking about obviousness type, and that's correct.

[00:12:26] Speaker 04:
Here we've got a slight variation, but it's merely an obvious variant.

[00:12:30] Speaker 04:
And what the court has done, and it goes back, I think it goes back long before the Zickengrott case that was mentioned earlier.

[00:12:39] Speaker 04:
I think it goes back over 100 years as articulated in the Gilead decision.

[00:12:44] Speaker 04:
Way back, I think Justice Story even, there's a quote from Justice Story that he said, look, it can't be,

[00:12:50] Speaker 04:
that a patentee can obtain two patents in sequence, substantially for the same invention and improvements, and it would be completely destroy the whole consideration derived by the public for a grant of a patent, the right to use the invention at the expiration of the term.

[00:13:03] Speaker 04:
And the point is, yes, Congress contemplated and understood what double patenting is, because Congress said, we're not going to let you get more than what we've given you.

[00:13:16] Speaker 04:
What we've given you is a particular term, a particular time period,

[00:13:19] Speaker 04:
of limited protection that you get, that limited exclusion of that patent.

[00:13:23] Speaker 04:
We're not going to let you string together patent after patent after patent and extend that beyond what you've got.

[00:13:29] Speaker 04:
So where the real statutory support is historically is it's in the term of the statute itself.

[00:13:35] Speaker 04:
It's true, applicant comes forth with a second application and that second application gets examined for all the other provisions of the statute and yeah,

[00:13:46] Speaker 04:
The agency writes an obviousness type double patenting doctrine based on the historical developed doctrine from the courts.

[00:13:53] Speaker 04:
But what's really happening is the agency is saying, we're not going to let you go out into the world with two separate patents that have two claims in them that effectively cover the same invention.

[00:14:04] Speaker 04:
That would be violating your limited term that Congress gave you.

[00:14:09] Speaker 04:
Congress understood what a limited term was, and they're not going to let you make minor changes

[00:14:14] Speaker 04:
to circumvent what they statutorily authorized.

[00:14:18] Speaker 04:
So I said, in a sense, that's where the statute lies for the statutory acknowledgement of the doctrine.

[00:14:26] Speaker 04:
And I think Judge Penn mentioned earlier, there's also Section 253 where, yes, they don't expressly state in the last period of history, but I don't.

[00:14:36] Speaker 04:
I apologize.

[00:14:37] Speaker 00:
Go ahead, Your Honor.

[00:14:39] Speaker 00:
Why is it that Congress did not codify the ODP doctrine?

[00:14:43] Speaker 00:
If what you say is true,

[00:14:46] Speaker 00:
If the PTO office issues a patent based on criteria that's grounded in the statute, what right does a court have to come along and take it away?

[00:14:59] Speaker 04:
Well, Your Honor, I don't look upon it as the court taking it away.

[00:15:03] Speaker 04:
I think what the agency is doing, consistent with the court's doctrine, is the agency is ensuring that two patents don't go out the door that effectively cover the same thing.

[00:15:15] Speaker 04:
That's what the agency's protecting against, and they're following the court's document.

[00:15:19] Speaker 04:
The British Congress says that.

[00:15:20] Speaker 04:
So I don't believe that there is an additional requirement of patentability, which is what Appellant has argued.

[00:15:25] Speaker 04:
I believe it's the same requirement that you get a patent covering a invention.

[00:15:31] Speaker 04:
And in simply obvious variants of that thing, the public has all, for hundreds of years, all the way back over 100 years, the public has always had a right to rely on the expiration of that term

[00:15:45] Speaker 04:
and then that they could realize that that claim or obvious variance of it were then available to the public domain.

[00:15:55] Speaker 02:
That's what Cox promised.

[00:15:57] Speaker 02:
Would you say the addition of the obviousness point is statutorily grounded in 103?

[00:16:06] Speaker 04:
Well, I don't know that I'd say it's grounded in 103.

[00:16:09] Speaker 04:
I think 103 is the test used

[00:16:12] Speaker 04:
to help compare the two claims, Your Honor.

[00:16:14] Speaker 04:
103, by definition, requires the two patents to be prior art, one of them be prior art to the other, and here, prior art is not relevant.

[00:16:24] Speaker 04:
It doesn't matter that the one claim is not prior art to the other.

[00:16:29] Speaker 04:
The bottom line is the doctrine prevents an applicant or a pattee from having two claims covering the same subject matter or improperly extending the term

[00:16:40] Speaker 04:
of their protected invention.

[00:16:41] Speaker 04:
That's what it protects against.

[00:16:43] Speaker 04:
So the reason why I wouldn't say it's 103 is because 103 requires it to be prior art.

[00:16:49] Speaker 04:
But 103 is a test used to help compare the two claims to determine whether or not they are distinct or indistinct, right?

[00:16:58] Speaker 04:
That's the purpose of 103.

[00:17:01] Speaker 04:
I don't know if that's helpful for your question, Your Honor.

[00:17:06] Speaker 01:
Mr. Lamarca, do you think the doctrine

[00:17:08] Speaker 01:
Assuming for the moment that obviousness type double patenting is a judicial gloss on what I'll call same invention double patenting, do you think the obviousness type double patenting doctrine, its genesis comes from the Supreme Court or the CCPA or some other court?

[00:17:33] Speaker 04:
If we look at the Gilead decision, Your Honor, which I'm

[00:17:37] Speaker 04:
I'm sure you're familiar with because I believe... Yes, yes.

[00:17:41] Speaker 04:
There's a long recitation of the history in there of the doctrine and it does point out in I think footnote four of the Gilead decision and let me turn to that.

[00:17:53] Speaker 01:
It cites many cases.

[00:17:55] Speaker 01:
I'm just trying to figure out what the PTO thinks.

[00:17:57] Speaker 01:
Does the PTO think the origins of obviousness type double patenting come from the Supreme Court as opposed to say the CCPA such that

[00:18:07] Speaker 01:
this court, the Federal Circuit, lacks the authority to even overturn this particular doctrine, assuming for the moment it is, in fact, a judge-made doctrine.

[00:18:18] Speaker 04:
Yeah.

[00:18:19] Speaker 04:
I think right now, our position is we are bound by Federal Circuit and CCPA precedent.

[00:18:28] Speaker 04:
And we don't believe that there's any Supreme Court law that conflicts with it or that it violates Supreme Court law.

[00:18:36] Speaker 04:
When we read these cases, the history of the doctrine goes back to, like I said earlier, the concept that you're entitled to your limited term.

[00:18:46] Speaker 04:
And if you try to go beyond that term, that is a fundamental principle that even is embedded in Supreme Court case law, that you're entitled to your limited term, but you don't get to extend that term beyond the statutory length.

[00:18:59] Speaker 04:
And therefore, the obviousness type double patent doctrine is ensuring

[00:19:04] Speaker 04:
that the term is what you were awarded by the grant and that you don't get to go beyond it.

[00:19:09] Speaker 04:
So arguably, the historical Supreme Court case law is in support of this doctrine, but we don't see any conflict in the Supreme Court case law with the doctrine, nor do we see conflict in the statute, because as you pointed out earlier, there are other provisions in the statute that, in effect, reflect that Congress is fully aware of the ODP doctrine.

[00:19:30] Speaker 04:
Section 253, I believe you mentioned,

[00:19:36] Speaker 04:
statute which also contains a provision that if the agency makes a restriction requirement and divides an application into two separate inventions that the agency cannot come back and make a double patting rejection because they've set on the record that it's divisible.

[00:19:55] Speaker 04:
So the point is Congress is aware of the doctrine.

[00:20:00] Speaker 04:
The statute's been recodified and amended many times and Congress has never

[00:20:06] Speaker 04:
ever express any reason why the doctrine wasn't valid.

[00:20:13] Speaker 04:
And in fact, those codifications basically support the doctrine that show that it is valid, that it's embedded in many, many, many years of case law.

[00:20:21] Speaker 04:
And not only that, the terminal disclaimer concept, which you pointed out, Section 253, which provides the ability to do a disclaimer, that became a tool to help these applicants

[00:20:32] Speaker 04:
Appellant said, hey, we're not allowing the applicants to get the patent that they deserve.

[00:20:36] Speaker 04:
Well, yes, we are.

[00:20:38] Speaker 04:
We're allowing an applicant that has an obviousness-type double patent rejection to get their patent.

[00:20:42] Speaker 04:
That's the whole benefit of the terminal disclaimer.

[00:20:45] Speaker 04:
By disclaiming that tail end of the term and making the terms the same and committing that the two patents would be joined together as a single patent, we are giving the applicant their patent for the term that Congress allows them to have.

[00:21:01] Speaker 04:
We're not giving them more terms.

[00:21:02] Speaker 04:
we're giving the statutory term.

[00:21:05] Speaker 04:
And I believe the Gilead case cites an old case called Robeson, R-O-B-E-S-O-N, which explains that as well.

[00:21:13] Speaker 04:
So I think there is plenty of statutory support for the doctrine, even though it may not be precisely or especially written into the statute.

[00:21:22] Speaker 04:
And I think, as you might have even pointed out, keep in mind, the courts have the authority to make

[00:21:30] Speaker 04:
doctrines that are not expressly in the statute.

[00:21:32] Speaker 04:
I think you pointed out there's the doctrine of equivalence.

[00:21:35] Speaker 04:
You pointed out there's even a doctrine called a sign or estoppel, which recently went to the Supreme Court, which was an equitable doctrine not expressly in the statute.

[00:21:44] Speaker 04:
And I can think of others as well.

[00:21:46] Speaker 04:
For example, the reissue statute, Your Honor, long before the reissue statute was ever codified, reissue was a traditionally created doctrine that was later codified, just like you pointed out

[00:21:57] Speaker 04:
Section 103, in some of these cases, it says Section 103, obviousness, was first a judicially created doctrine and ultimately codified.

[00:22:06] Speaker 04:
So my point is, in our view, I'm sorry.

[00:22:09] Speaker 02:
Council, as we've said before, applicant wasn't denied a patent here.

[00:22:17] Speaker 02:
Applicant could have gotten a patent with a term

[00:22:23] Speaker 02:
nine months less than he wants if he filed a terminal disclaimer.

[00:22:28] Speaker 02:
Now, if we agree with you here and hold that we're bound by obviousness type double patenting law, what happens?

[00:22:41] Speaker 02:
Can they come back again and file that terminal disclaimer or have they, is that issue lost and they've lost that patent application?

[00:22:52] Speaker 04:
I don't, I think as long as the application is still pending, Your Honor, I think they haven't lost it.

[00:23:00] Speaker 04:
I'm not 100% sure whether or not they would have to file a continuation of this application to keep it going because this application is right in front of the court.

[00:23:08] Speaker 04:
But I believe they can still, as long as it's still pending and it hasn't terminated, the proceedings are still live and it's a pending application, I believe there is a way, a procedural way for them to still file their criminal

[00:23:22] Speaker 04:
It may be that they can't reopen prosecution, but we can continue it.

[00:23:26] Speaker 02:
If it was still pending, it wouldn't be final for purposes of appeal.

[00:23:32] Speaker 04:
Well, no, Your Honor.

[00:23:33] Speaker 04:
When I say pending, I mean although it's still pending, the application is still alive because it's on appeal before the court.

[00:23:42] Speaker 04:
But prosecution is closed before the agency.

[00:23:45] Speaker 04:
The agency is no longer allowing prosecution.

[00:23:48] Speaker 04:
What they can do because the application has the proceedings have not terminated.

[00:23:53] Speaker 04:
They have a right I believe to file a continuation off of this continuing application off of this application and then they could file their terminal disclaimer.

[00:24:02] Speaker 04:
I think they could do that.

[00:24:08] Speaker 02:
Anything further counsel?

[00:24:10] Speaker 04:
No, Your Honor, I have nothing further and I apologize for all the technical difficulties, but I appreciate you be willing to, the court being willing to listen to me and wait for me.

[00:24:22] Speaker 02:
We don't attribute the difficulties to you or your client.

[00:24:27] Speaker 02:
Mr. Fanning has a little rebuttal time.

[00:24:32] Speaker 03:
Thank you.

[00:24:33] Speaker 03:
Let me address first this terminal disclaimer issue.

[00:24:36] Speaker 03:
where Sawstock can still get a patent if we file a terminal disclaimer.

[00:24:40] Speaker 03:
Okay, but the claims in the two applications are very different.

[00:24:45] Speaker 03:
The earlier patent claims a woodworking machine with a circular blade on a shaft.

[00:24:49] Speaker 03:
The merits are not before us.

[00:24:51] Speaker 03:
I know.

[00:24:51] Speaker 03:
I just want to explain why we think a terminal disclaimer is insufficient, is an insufficient remedy.

[00:24:57] Speaker 03:
Because the coverage of the two claims are different.

[00:25:01] Speaker 03:
One does not infringe the other and the other doesn't go back that way.

[00:25:04] Speaker 03:
And so by filing a terminal disclaimer, SOSTA must give up patent terms that Congress says we should be able to give.

[00:25:11] Speaker 03:
That's our argument.

[00:25:12] Speaker 03:
We understand.

[00:25:13] Speaker 03:
That's our argument.

[00:25:13] Speaker 03:
That's our argument.

[00:25:15] Speaker 03:
Now, on the Abbe case that was mentioned, there's a sentence in that case that talks about double patenting, quote, is grounded in the text of the Patent Act.

[00:25:24] Speaker 03:
That's the closest statement I've seen in a case saying that there's a statutory basis for obviousness type double patenting.

[00:25:31] Speaker 03:
But in that same paragraph at the end, the court then goes on and says, obviousness type double patenting is, quote, grounded in public policy.

[00:25:39] Speaker 03:
So it kind of says both, I guess, or kind of wishy washy.

[00:25:42] Speaker 00:
I want to make that point.

[00:25:44] Speaker 00:
Is the doctrine addressed in the Uruguay Rounds Act?

[00:25:48] Speaker 00:
Not the act that we passed.

[00:25:52] Speaker 03:
The one that the URAA, the Uruguay Rounds something act.

[00:25:57] Speaker 03:
Right.

[00:25:58] Speaker 03:
Not that I know of.

[00:25:59] Speaker 03:
I think that might have been the one where a proposition was made to include.

[00:26:03] Speaker 00:
It's the Statement of Administration, which is, which enacts the Uruguay Round requirements.

[00:26:12] Speaker 00:
And I think it is addressed in there.

[00:26:14] Speaker 00:
I'm not sure that's what I'm asking.

[00:26:16] Speaker 00:
And if it is, under our law, that's a statute.

[00:26:21] Speaker 00:
The Statement of Administrative Action, that's what it's called.

[00:26:24] Speaker 00:
And I think it's, I believe it is addressed in there, in the section that deals with the change to first to file.

[00:26:34] Speaker 00:
I'm unaware of that.

[00:26:35] Speaker 00:
Okay.

[00:26:35] Speaker 00:
Just be aware that that is a, under our law, that Statement of Administrative Action is a statute.

[00:26:43] Speaker 03:
Thank you.

[00:26:45] Speaker 03:
I want to also address one point that was raised.

[00:26:49] Speaker 03:
We talk a lot when we talk about, obviously, this type of double patenting is you don't want to get this unjustified extension patent term.

[00:26:55] Speaker 03:
I get it.

[00:26:56] Speaker 03:
But the bargain for a patent goes two ways.

[00:27:00] Speaker 03:
The inventor is disclosing to the public information.

[00:27:03] Speaker 03:
And in exchange, the inventor gets a patent.

[00:27:07] Speaker 03:
And so when you weigh this

[00:27:11] Speaker 03:
you know, what's the public, you know, is the public being harmed?

[00:27:15] Speaker 03:
Way also the fact that the inventor might be harmed.

[00:27:18] Speaker 03:
There's two sides to that bargain.

[00:27:20] Speaker 03:
And in this case, Sawstop has denied a patent because of that.

[00:27:24] Speaker 03:
So I wanted to mention that.

[00:27:26] Speaker 03:
It's a two-way street there.

[00:27:28] Speaker 03:
And then there's a question about the genesis of this.

[00:27:31] Speaker 03:
My reading of the Supreme Court cases was that they considered statutory double patenting, what we would today call statutory double patenting, not obviousness type double patenting.

[00:27:40] Speaker 03:
I believe the genesis is with Judge Rich in footnote four of Zickendorf.

[00:27:45] Speaker 03:
That's the earliest I've been able to see, the first articulation of it.

[00:27:49] Speaker 01:
First of all, he said that obviousness type double patenting has been around for decades.

[00:27:54] Speaker 01:
And then he cited a 1932 CCPA case for that.

[00:27:58] Speaker 01:
So I don't think you can say

[00:28:01] Speaker 01:
Zickendorf was the first articulation of the ODP doctrine.

[00:28:05] Speaker 03:
After your question, I'll go back and read the case again.

[00:28:06] Speaker 03:
But I don't think he said it that explicitly.

[00:28:08] Speaker 03:
I think we're reading it that way.

[00:28:09] Speaker 03:
And that's not what he said.

[00:28:10] Speaker 01:
But we'll see.

[00:28:12] Speaker 01:
OK.

[00:28:12] Speaker 01:
Well, this court has said ODP has been around for over a century.

[00:28:17] Speaker 03:
I don't know about the century part, but OK.

[00:28:20] Speaker 01:
And then are you familiar with Miller versus Eagle?

[00:28:23] Speaker 01:
The Supreme Court case?

[00:28:24] Speaker 01:
1894 Supreme Court case, where it said

[00:28:30] Speaker 01:
You know, if the second patent be identical with or only a colorable variation from the first patent, then the second patent will be void as a patentee cannot take two patents from the same invention.

[00:28:44] Speaker 01:
And then later it says, you know, the second patent needs to be essentially distinct and separable.

[00:28:52] Speaker 01:
from the invention covered by the first patent for the validity to be sustained.

[00:28:57] Speaker 01:
And then goes on to say, it must be something substantially different.

[00:29:02] Speaker 01:
It must be something more than a mere distinction of the breadth or scope of the claims in the first patent.

[00:29:09] Speaker 01:
So this Supreme Court opinion from 1894, it doesn't seem to be contemplating a doctrine that is limited to

[00:29:22] Speaker 01:
identical claim scope in the second patent compared to the first patent.

[00:29:27] Speaker 01:
It's looking for something substantially different in order to merit the second patent to go forward and not be voided in the view of what is covered by the first patent.

[00:29:37] Speaker 03:
I would ask court just to consider whether that language goes as far as obvious or whether it's saying

[00:29:43] Speaker 03:
you know, essentially the same?

[00:29:45] Speaker 03:
Is that the same as the same as we interpret the same today?

[00:29:48] Speaker 03:
Does it go as far as obviousness?

[00:29:50] Speaker 03:
Because that seems to be, you know, Judge Rich's footnote.

[00:29:53] Speaker 03:
That's why he has the footnote there.

[00:29:56] Speaker 03:
The two other judges in the panel said the same invention.

[00:29:58] Speaker 03:
He said a different invention because, anyway, you get it.

[00:30:02] Speaker 03:
Anyway, I seem like, oh, I got 18 seconds.

[00:30:04] Speaker 02:
No, that's a red light.

[00:30:05] Speaker 02:
That's a red light.

[00:30:06] Speaker 02:
My mistake.

[00:30:08] Speaker 02:
Thank you.

[00:30:09] Speaker 02:
Thank you.

[00:30:09] Speaker 02:
Thank you very much.

[00:30:12] Speaker 02:
That concludes our arguments for today.