[00:00:00] Speaker 00:
First argued case this morning is number 21, 1536, Saw Stop Holding LLC against Vidal.

[00:00:10] Speaker 00:
Mr. Newton.

[00:00:19] Speaker 04:
Thank you, Your Honor.

[00:00:21] Speaker 04:
May it please the court, Jared Newton, for the appellant, Saw Stop Holding LLC.

[00:00:26] Speaker 04:
Before I get started, I reserve three minutes for rebuttal time.

[00:00:29] Speaker 04:
This case involves two consolidated appeals, both of which relate to patent term adjustment determinations by the U.S.

[00:00:37] Speaker 04:
Patent and Trademark Office under 35 U.S.C.

[00:00:39] Speaker 04:
154.

[00:00:41] Speaker 04:
I'll start with the 796 patent, which is the first one addressed in the blue brief.

[00:00:46] Speaker 04:
The 796 patent presents a straightforward application of the statutory tax.

[00:00:50] Speaker 04:
The subsection that's at issue here, subsection C3, provides for a patent term adjustment if a patent issues under an appellate decision reversing an adverse determination of patentability.

[00:01:03] Speaker 04:
Here, the 796 patent, the underlying application, was subject to an adverse determination of patentability in the form of an anticipation rejection that the examiner issued, then the PTAB then upheld on appeal within the patent office.

[00:01:16] Speaker 04:
And so it's also a file of a section 145 appeal to the District Court for the District of Columbia.

[00:01:21] Speaker 04:
That appeal lasted seven years, at the conclusion of which the district court held that the anticipation rejection was reversed, thus triggering the plain text of the statute, reversing an adverse determination of patentability.

[00:01:34] Speaker 03:
You're talking about claim one, right?

[00:01:36] Speaker 04:
Yes, Your Honor.

[00:01:37] Speaker 03:
Did claim one issue in that patent?

[00:01:40] Speaker 04:
Claim one was later amended to incorporate... It was cancelled, right?

[00:01:43] Speaker 04:
It was cancelled and incorporated into the limitations of claim two.

[00:01:46] Speaker 04:
And this goes to a point that the patent office raised, which is they focus very specifically on the claim that was subject to appeal.

[00:01:54] Speaker 04:
But the statute doesn't talk about the claim.

[00:01:56] Speaker 04:
The statute talks about the patent that issues under the appellate decision.

[00:02:01] Speaker 04:
And so Congress, who was drafting the statute, didn't say, in order to get a patent term adjustment under subsection C, you have to maintain that same claim that was subject to appeal.

[00:02:09] Speaker 03:
So I understand the reason why we're here on appeal with regard to the 796 patent.

[00:02:14] Speaker 03:
and that your opening left out was the fact that not only was there an anticipation rejection on the claim one of the 796, but there was also a provisional ODP rejection.

[00:02:26] Speaker 03:
And so when it came back from the district court in the 145, there was still the lingering provisional ODP rejection, correct?

[00:02:36] Speaker 01:
That's correct.

[00:02:37] Speaker 03:
Okay, so therefore this case

[00:02:41] Speaker 03:
in part comes down to what does the statute mean when it talks about an adverse determination of patentability and did the district court in fact reverse an adverse determination of patentability if the claim on the way back still had to contend with this provisional obviousness type double patenting rejection.

[00:03:02] Speaker 03:
I mean, that claim, claim one, could not issue after the district court opinion came back, right?

[00:03:10] Speaker 04:
That's correct.

[00:03:11] Speaker 04:
The claim as it came out remained subject to this provisional non-statutory double patenting rejection that the applicant did have to account for, which led to the cancellation of claim one in the incorporation.

[00:03:22] Speaker 03:
Is there a reason why you didn't challenge the double patenting rejection at the district court level?

[00:03:28] Speaker 03:
the case was filed uh... challenging the ptax decision overall right and then you have decision affirmed the anticipation rejection and the double-patent rejections i understand that's correct okay and then you appeal that through one forty five civil action which you're entitled to that's correct but for whatever reason you only challenge the anticipation rejection and did not challenge the double-patent rejection that's correct so i'm just trying to understand why would you do that well partly is partly because of the procedural posture of the appeal

[00:03:58] Speaker 04:
The appeal from the Patent Office went to the District Court for the District of Columbia and then it was stayed pending resolution of a related appeal that Cell Stop had undertaken.

[00:04:09] Speaker 04:
that was dealing with the same issue, whether this Freeman prior art reference was enabled for the limitation that was at issue.

[00:04:16] Speaker 04:
So the appeal that actually occurred with respect to the 796 patent was put on hold for seven years while this other appeal played out.

[00:04:25] Speaker 04:
And then when the other appeal finished, which culminated in the detailed opinion saying Freeman is not enabled, there was a one paragraph order in this appeal where the court said, we're reversing the anticipation rejection remanding to the PTAB.

[00:04:41] Speaker 01:
Mr. Newton, let me give you a little hypothetical.

[00:04:45] Speaker 01:
Let's suppose there is an application with two independent claims, claim one and claim two.

[00:04:52] Speaker 01:
Claim one is rejected, goes up on appeal.

[00:04:56] Speaker 01:
The appeal takes seven years.

[00:04:59] Speaker 01:
The appellant prevails, and then it goes back, and the appellant, for whatever reason, just cancels claim one.

[00:05:08] Speaker 01:
So the only claim left is claim two, which was allowed in the first place.

[00:05:15] Speaker 01:
Is that issuing patent entitled to a patent term adjustment?

[00:05:20] Speaker 04:
Under the text of the statute, it is, because the statute, again, focuses on the patent that issued as a result of the appealer following the appeal decision.

[00:05:30] Speaker 01:
But it talks about the patent that issued

[00:05:34] Speaker 01:
as a result of the reversal of a determination of patentability.

[00:05:41] Speaker 01:
And there was no determination of patentability with respect to claim two.

[00:05:46] Speaker 04:
Well, I think that goes a little bit too far into reading into the statute this requirement that the patent issues as a result.

[00:05:52] Speaker 04:
That phrase does not appear in the statute.

[00:05:55] Speaker 03:
It says issues under the umbrella.

[00:05:57] Speaker 03:
So what is your understanding of issued under?

[00:05:59] Speaker 04:
Under is a temporal limitation.

[00:06:01] Speaker 04:
It's not beneath, right?

[00:06:04] Speaker 04:
Below, I think is fair, below or beneath.

[00:06:06] Speaker 04:
But it's the purpose of the statute.

[00:06:08] Speaker 03:
But that's not the meaning of under in section 154, right?

[00:06:14] Speaker 03:
It doesn't mean below or beneath.

[00:06:17] Speaker 04:
If you read it in the context of the statute, I believe that absolutely is the meaning.

[00:06:21] Speaker 04:
And that is the only way to give effect to the purpose of the statute.

[00:06:24] Speaker 03:
Well, there's an alternative meaning.

[00:06:25] Speaker 03:
Under also commonly is the same thing as pursuant to or as a result of.

[00:06:31] Speaker 04:
Well, we don't think that makes sense because if you read it as as a result of or pursuant to,

[00:06:36] Speaker 04:
both of which were discussed during the legislative history and not included in the statute.

[00:06:40] Speaker 04:
They adopted this broader term under.

[00:06:42] Speaker 04:
But if you impose this result requirement in the statute, then you have to decide if an appellate decision is actually making a patentability determination.

[00:06:51] Speaker 04:
And the PTAB on appeal, the District Court for District of Columbia, doesn't make those patentability determinations.

[00:06:58] Speaker 04:
It looks at the record below, like an appeals court, and says, was it right or was it wrong?

[00:07:03] Speaker 04:
And the statute says if the appeals court or the PTAB says it was wrong, there's an adverse determination of patentability and that's wrong, the applicant should get compensated for that.

[00:07:14] Speaker 04:
And Judge Lynn, turning back to your hypothetical, there's a practical idea here too, which is if you take this case, seven years on appeal, there's a lot that can change.

[00:07:23] Speaker 04:
We pointed out in our briefing, SALSA filed an ITC action.

[00:07:27] Speaker 04:
They had a number of IPRs filed against their related patents.

[00:07:31] Speaker 04:
During that long period of time, a lot can happen that will cause the patentee to want to make certain changes, whether they want to cancel claims or draft new claims to focus on a new aspect of the technology.

[00:07:45] Speaker 04:
They want to amend the claims to account for prior art that came to light in a parallel proceeding.

[00:07:49] Speaker 04:
the statute permits them to do that.

[00:07:51] Speaker 04:
And conversely, the statute shouldn't be restrictive and say, patentees, I'll stop.

[00:07:57] Speaker 04:
You need to choose.

[00:07:58] Speaker 04:
Either you can continue prosecution after the appeal, or you get a patent term adjustment.

[00:08:02] Speaker 04:
The statute's not drafted to force a choice.

[00:08:04] Speaker 01:
Here's the problem I'm having is that you make some very interesting and not unreasonable arguments about when there should be a patent term adjustment and what circumstances might

[00:08:19] Speaker 01:
warrant a patent term adjustment.

[00:08:22] Speaker 01:
All of these are reasonable considerations, but Congress passed a statute which is fairly specific, and that's what we have to live with.

[00:08:33] Speaker 01:
It seems to me that what you're trying to do is to read out of this statute an entire phrase, the phrase in which the patent was issued under a decision in review.

[00:08:44] Speaker 01:
so that the statute simply reads, if the issuance is delayed due to appellate review in a case reversing an adverse determination of patentability, that's enough.

[00:08:58] Speaker 01:
But that's not what the statute says.

[00:09:02] Speaker 01:
Well, it says issued under, but we believe.

[00:09:05] Speaker 01:
It issued under a decision in the review, a decision in the review reversing an adverse determination of patentability.

[00:09:15] Speaker 01:
in my hypothetical, claim two was allowed in the first instance.

[00:09:22] Speaker 01:
That patent was not issued under a decision in review reversing an adverse determination of patentability because claim two was allowed even before the appeal.

[00:09:34] Speaker 04:
Well, let me make two responses.

[00:09:37] Speaker 04:
First, the concept of issued under

[00:09:42] Speaker 04:
if you take a narrower interpretation of it where you have to say the patent actually issues as a result of the appeal decision, well then there's ambiguity in the statute of what does that mean?

[00:09:54] Speaker 04:
What does an appeal decision have to do to effectively issue the patent as a result of that decision?

[00:10:01] Speaker 04:
And then the second point, your hypothetical, which I understand it and I still think the statute applies to it, but this situation is narrower than your hypothetical.

[00:10:11] Speaker 04:
In this situation, what we had was only one anticipation rejection.

[00:10:16] Speaker 04:
And we pointed to some of the case law, like the Donaldson case, that says an anticipation rejection is a patentability determination.

[00:10:22] Speaker 04:
That was the only adverse determination of patentability.

[00:10:25] Speaker 04:
In the words of Donaldson, in the words of the aristocrat case.

[00:10:27] Speaker 03:
There's the double patenting rejection at the same time.

[00:10:30] Speaker 03:
There were two different grounds for rejecting claim one.

[00:10:33] Speaker 03:
One was the anticipation rejection.

[00:10:35] Speaker 03:
The other one was the double patenting rejection.

[00:10:37] Speaker 03:
And after the district court action, there was still the double patenting rejection.

[00:10:40] Speaker 03:
So therefore, the claims continued to remain unpatentable after the issuance of the district court opinion in the 145 action.

[00:10:47] Speaker 04:
Well, I disagree that they were unpatentable as a result of the double patenting rejection because it was provisional.

[00:10:53] Speaker 03:
But even if you put that point aside, the provisional point aside... The patent could not issue with a provisional double patenting rejection pending.

[00:10:59] Speaker 03:
Do we agree on that?

[00:11:03] Speaker 04:
I agree on that, yeah.

[00:11:04] Speaker 04:
The applicant had to take, you know, a steps, either amend the claim or file a terminal disclaimer.

[00:11:08] Speaker 03:
Right.

[00:11:09] Speaker 03:
In that sense, the status of the claim post 145 action was unpatentable.

[00:11:16] Speaker 03:
The claim was still unpatentable.

[00:11:20] Speaker 04:
I disagree because I think that a provisional double patenting rejection doesn't have the force or effect of an actual rejection.

[00:11:31] Speaker 04:
And it's also not a statutory condition for patentability.

[00:11:35] Speaker 04:
The only statutory condition that was on appeal was the anticipation rejection, which was indisputably reversed.

[00:11:40] Speaker 03:
Double patenting rejections don't count?

[00:11:43] Speaker 04:
They don't count as a statutory condition for patentability.

[00:11:45] Speaker 04:
That's the aristocrat decision, which says 101, 102, 103.

[00:11:50] Speaker 04:
Those are the statutory conditions for patentability.

[00:11:53] Speaker 04:
Donaldson, too, makes the same point.

[00:11:55] Speaker 04:
And there are other requirements in the words of the aristocrat decision.

[00:12:00] Speaker 04:
Non-statutory double patenting, provisional double patenting might be one of those.

[00:12:04] Speaker 04:
But it's not a statutory ground for patentability.

[00:12:07] Speaker 03:
But it doesn't say statutory ground for patentability.

[00:12:10] Speaker 03:
It says adverse determination of patentability.

[00:12:13] Speaker 04:
Right, and determination of patentability.

[00:12:15] Speaker 03:
So double patenting rejection?

[00:12:16] Speaker 03:
an adverse determination of patentability?

[00:12:19] Speaker 04:
I don't believe it is, no.

[00:12:20] Speaker 04:
If you look at the Donaldson case, which is an en banc case, the entire court is identifying patentability determinations as anticipation.

[00:12:27] Speaker 03:
And Ray Donaldson, I think we would both agree, doesn't get into the statutory question or the question of how to understand what is a determination of patentability versus not a determination of patentability.

[00:12:38] Speaker 03:
It just happened to talk about different determinations of patentability in a more casual sense.

[00:12:45] Speaker 04:
Well, I think it supports the idea that when we're talking about patentability determinations, those are the requirements that we are talking about, not other requirements.

[00:12:53] Speaker 04:
And when you read that in connection with the aristocrat case, you have other requirements for a valid patent.

[00:12:58] Speaker 03:
Getting back to the meaning of under, where you say it means below, what would the statute mean if we replaced under with below?

[00:13:08] Speaker 03:
in a case in which the patent was issued below a decision in the review reversing an adverse determination of patentability.

[00:13:16] Speaker 03:
I mean, replacing under with below doesn't make sense to me.

[00:13:20] Speaker 04:
I respectfully disagree.

[00:13:22] Speaker 04:
It fulfills the purpose of the statute.

[00:13:24] Speaker 03:
What does it mean to be issued below a decision in the review?

[00:13:28] Speaker 04:
It means that during the course of prosecution, the patent application was subject to an appeal that the applicant has to undertake.

[00:13:36] Speaker 03:
It's not issued by a decision below.

[00:13:38] Speaker 03:
It's issued below a decision under your reading of the statute.

[00:13:43] Speaker 04:
Right, which means the issuance occurred after an appeal, which happened sometime during the course of prosecution.

[00:13:49] Speaker 04:
And again, that's the way to give purpose to the statute.

[00:13:52] Speaker 04:
If I have to undertake an appeal to overcome a bad rejection, regardless of where that occurs along the timeline of prosecution, my patent term is still impacted by that.

[00:14:01] Speaker 04:
And that's why the statute was drafted to compensate the applicant, regardless of where along the line the appeal occurs.

[00:14:08] Speaker 04:
That's why it's in terms of the patent, not a particular claim that has to be subject to the appeal.

[00:14:13] Speaker 04:
and it doesn't say the particular claim has to actually come out of the appeal.

[00:14:19] Speaker 04:
Briefly, I've got one minute before my rebuttal time.

[00:14:22] Speaker 04:
I just want to touch on the 476 patent.

[00:14:28] Speaker 04:
There are overlapping issues because it's the same statutory provision.

[00:14:31] Speaker 04:
But there, there was, you know, the adverse determination of patentability was an obviousness rejection that the examiner made.

[00:14:40] Speaker 04:
And Saul Stopp had to, again, undertake an appeal to actually get that obviousness rejection removed, that bar of patentability, and to allow prosecution to continue.

[00:14:51] Speaker 04:
So it's the same idea that they had no choice but to undertake that appeal to keep prosecution going.

[00:14:59] Speaker 04:
Yes, they continued prosecution after the appeal because the PTAB had entered a new ground of rejection.

[00:15:04] Speaker 04:
But that shouldn't take away.

[00:15:05] Speaker 01:
So the claim that was on appeal was still subject to rejection after the appeal as it was before the appeal, correct?

[00:15:14] Speaker 01:
Well, not the same rejection.

[00:15:16] Speaker 01:
Different rejection, but still subject to rejection.

[00:15:19] Speaker 01:
Before and after, yes, the claim was rejected.

[00:15:22] Speaker 01:
It was the subject of an adverse patentability determination

[00:15:27] Speaker 01:
both before and after.

[00:15:29] Speaker 04:
Yes, but different patentability determinations.

[00:15:32] Speaker 04:
And when you look at the statute, it says, an adverse determination of patentability, which saw a stop overcame.

[00:15:37] Speaker 04:
And with that, I'll yield to my colleague.

[00:15:41] Speaker 04:
Unless there's any other questions.

[00:15:42] Speaker 00:
Thank you.

[00:15:43] Speaker 00:
I will save your rebuttal time.

[00:15:49] Speaker 00:
Mr. Chen.

[00:15:51] Speaker 02:
May it please the court.

[00:15:52] Speaker 02:
Good morning.

[00:15:53] Speaker 02:
My name is Haugum Chan, and I'm an Assistant U.S.

[00:15:55] Speaker 02:
Attorney here today representing the Defendant Epeli, Ms.

[00:15:58] Speaker 02:
Catherine Vidal, or the U.S.

[00:15:59] Speaker 02:
Patent and Trademark Office.

[00:16:01] Speaker 02:
When a rejected claim is appealed to the Patent Trial and Appeal Board or to a federal district court, common sense dictates that a successful appeal is one where the claim emerges patentable.

[00:16:12] Speaker 02:
And that is the lens with which to view this case about whether the 476 patent

[00:16:18] Speaker 02:
and the 796 patent are entitled to a patent term adjustment, or PTA, under 35 USC, section 154, B1C3, which I will refer to as the C delay provision for today.

[00:16:31] Speaker 02:
Neither of these patents is entitled to see delay because no appellate body reversed an adverse determination of patentability and the patents didn't issue under any such reversal.

[00:16:42] Speaker 02:
With respect to claim 11 of the underlying application for the 476 patent, as Judge Lynn alluded to,

[00:16:50] Speaker 02:
The examiner had determined that the claim was unpatentable as obvious.

[00:16:56] Speaker 02:
That rejection or that ground of unpatentability was appealed to the board.

[00:17:02] Speaker 02:
And although the board did change the underlying rationale for why the particular references rendered that claim unpatentable, it nevertheless affirmed the obviousness rejection.

[00:17:14] Speaker 01:
Well, let's be precise, because the PTAM

[00:17:20] Speaker 01:
didn't just come up with a new rationale.

[00:17:23] Speaker 01:
They basically concluded that the rejection under appeal could not be sustained, but they issued a new ground of rejection.

[00:17:33] Speaker 01:
It was still a 103 obviousness rejection, but it was a new ground of rejection, such that when it went back,

[00:17:44] Speaker 01:
the applicant had the right to respond and continue prosecution.

[00:17:48] Speaker 01:
So I just want to be clear on that.

[00:17:51] Speaker 01:
But my question to you is, let's suppose that in this case, the PTAB had reversed the rejection, and then it went back and the examiner decided to apply the new 103 rejection, the same one that the PTAB did.

[00:18:10] Speaker 01:
Under those circumstances, and ultimately the applicant prevails and convinces the examiner that that rejection should be withdrawn.

[00:18:19] Speaker 01:
Is the applicant entitled to a patent term adjustment under those circumstances?

[00:18:23] Speaker 02:
Your Honor, if I understand your hypothetical correctly, I think it falls within the last sentence of 37 CFR 1.702E, in which it lays out some circumstances in which an applicant would be entitled to a seed delay.

[00:18:41] Speaker 02:
And I think in your hypothetical, that applicant would be.

[00:18:44] Speaker 02:
To be clear, as I understand it, there would be

[00:18:47] Speaker 02:
appealed claim would ultimately have the patentability ruling reversed such that at that time when it comes back down, when it's remanded to the examiner, it's actually assuming all the conditions of allowability, other conditions of allowability are satisfied.

[00:19:03] Speaker 02:
If it's allowed to be allowed that point, then yes, that whatever patent ultimately issues from that claim would be entitled to see delay.

[00:19:12] Speaker 01:
But why should it make a difference as to whether the sort of second

[00:19:17] Speaker 01:
go around for the 103 rejection, the alternative ground of rejection or new ground of rejection.

[00:19:25] Speaker 01:
What difference does it make or should it make for patent term adjustment, whether that's done by the PTAB or by the examiner?

[00:19:32] Speaker 02:
Your Honor, the difference is because it adheres to the words of the statute.

[00:19:37] Speaker 02:
The words of the statute.

[00:19:39] Speaker 01:
In both cases, there's a delay.

[00:19:41] Speaker 01:
And in both cases, the ground of patentability

[00:19:48] Speaker 01:
that patentability determination that was initially subject to appeal was reversed.

[00:19:54] Speaker 02:
Your Honor, that is a policy choice that Congress has made.

[00:19:58] Speaker 02:
And the conduct of the PTO is strictly being adhered is just adhering to the plain words of the statute.

[00:20:05] Speaker 02:
And so what Congress wants in order for there to be sea delay is that there is a patent that was issued under a decision in the review reversing an adverse determination of patentability.

[00:20:15] Speaker 01:
So you're reading the statute.

[00:20:17] Speaker 01:
sort of literally and narrowly as you believe Congress intended?

[00:20:23] Speaker 02:
Your Honor, I'm certainly reading it literally.

[00:20:25] Speaker 02:
I'm not sure if narrowly is the right way to think about it.

[00:20:30] Speaker 02:
I think I'm reading it with just the right amount of width and length.

[00:20:35] Speaker 00:
Well, let's talk about that policy choice.

[00:20:40] Speaker 00:
Here we have a situation where the patent

[00:20:43] Speaker 00:
has not been granted, hasn't been issued.

[00:20:45] Speaker 00:
Therefore the patentee has none of the benefits of having a patent and yet time is running, measured from the filing date.

[00:20:57] Speaker 00:
The legislative policy was that the patentee would not be prejudiced in that case.

[00:21:05] Speaker 00:
And yet the office, you're telling us that the policy is that the time runs even though the patentee has, doesn't have the patent because prosecution one way or another is continuing either with other claims or for any other reason.

[00:21:25] Speaker 00:
And you're telling us that that is the legislative intent.

[00:21:29] Speaker 00:
uh... yes your honor uh... the p t a bill i'd leave that was kind of the legislative intent when the entire purpose enacting the adjustment was to remedy exactly you're telling us is happening

[00:21:47] Speaker 02:
Your honor, the legislative attempt in the committee reports that were cited in the brief show that Congress intended to compensate inventors and applicants for certain types of delay.

[00:21:59] Speaker 02:
And so they've been clearly promulgated in three separate provisions, A, B, and C delay.

[00:22:07] Speaker 02:
And with respect

[00:22:09] Speaker 02:
Your honor's question seems to suggest that because maybe the PTO was at fault here, that the applicant should be entitled to some form of delay.

[00:22:21] Speaker 02:
And my response to that sort of inquiry would be that is a policy decision that Congress has made.

[00:22:28] Speaker 02:
Again, certain types of delay are entitled to compensation.

[00:22:33] Speaker 02:
And I would just also point out in the court's past precedent, not necessarily on C delay, but with respect to A delay,

[00:22:39] Speaker 02:
that was cited in the brief, the Pfizer case and the Eydoronesia case, it was arguable that the PTO was at fault there because they issued incorrect notices of restriction, and yet this court also held under the relevant PTA provision that the applicant was not entitled to any sort of delay that may have been at the fault of the PTO.

[00:23:06] Speaker 02:
Your Honor, getting back to the requirement of a reversal of an adverse determination of patentability with respect to the second application at issue, the 527, or the underlying application of the 796 patent, again, the examiner have found that the relevant claim was unpatentable as anticipated, as well as subject to an ODP rejection.

[00:23:35] Speaker 02:
Ultimately, when the claim was appealed to the district court, the anticipation rejection was reversed.

[00:23:44] Speaker 02:
But nevertheless, there was still an ODP rejection remaining, rendering the claim unpatentable.

[00:23:49] Speaker 02:
And so therefore, Sossop then went and actually canceled the claim.

[00:23:55] Speaker 02:
So that claim that was even at issue before the DC district court was never in the ultimate patent at issue.

[00:24:04] Speaker 02:
And so for those reasons, neither claim 11 of the E29 application or claim one of the 527 application were issued under a reversal of an adverse determination of patentability.

[00:24:18] Speaker 03:
Mr. Chan, what do you think issued under a decision in the review means?

[00:24:23] Speaker 03:
Do you think that means that a claim that was actually before the board or the district court in this case

[00:24:33] Speaker 03:
where there was a reversal of any and all rejections against that claim actually ends up appearing in the final patent as is.

[00:24:46] Speaker 03:
Is that how we should think of under a decision?

[00:24:50] Speaker 03:
Because of that decision, that claim that had been previously determined to be unpatentable became patentable and therefore issued in the patent.

[00:25:02] Speaker 02:
Yes, Your Honor, and I would point to the word before was issued under in the statute.

[00:25:07] Speaker 02:
So the relevant phrase would be patent that was issued under a decision in the review reversing an adverse determination of patentability.

[00:25:15] Speaker 02:
So that patent that ultimately issues has to be somehow tied or traceable to a reversal of an adverse determination of patentability.

[00:25:25] Speaker 03:
I ask this question because there was something in one of the regulations that

[00:25:30] Speaker 03:
looked kind of confusing in 1.702e, I think.

[00:25:35] Speaker 03:
And there was a statement in that regulation that seemed to suggest that after a complete victory at the border at district court in reversing the unpatentability determination,

[00:25:52] Speaker 03:
Maybe there'd be further prosecution on that very claim.

[00:25:56] Speaker 03:
And that could lead to actual amendments, I think.

[00:26:02] Speaker 03:
And then that amended claim.

[00:26:05] Speaker 03:
would issue in a patent, and then therefore under that circumstance, could a patent get PTA?

[00:26:14] Speaker 02:
Yes, Your Honor.

[00:26:15] Speaker 02:
Your Honor has read the regulation correctly.

[00:26:17] Speaker 02:
37 CFR 1.702E, the very last sentence, allows for a C delay.

[00:26:24] Speaker 02:
Now again, I'll preface this by saying that 1.702E doesn't lay out every single circumstance under which

[00:26:31] Speaker 02:
a patent could ultimately be titled to C-delay.

[00:26:34] Speaker 02:
But with respect to the last sentence in 1.702E, there are two circumstances that are contemplated for which C-delay would be available.

[00:26:43] Speaker 02:
There would be a remand reversing an adverse determination of patentability, followed by what Judge Land had suggested in his hypothetical, maybe a new ground of rejection by the examiner, which is subsequently overcome through continued examination.

[00:26:57] Speaker 02:
or there is a remand, then followed by a notice of allowance, but then subsequently followed by a request for a continued examination.

[00:27:08] Speaker 02:
In both of those cases, ultimately the issued patent would be traceable to a reversal of an adverse determination of patentability.

[00:27:18] Speaker 02:
And that is a

[00:27:21] Speaker 02:
at least a reasonable interpretation, even if this court may not necessarily think that it's the best interpretation of the sea delay provision.

[00:27:30] Speaker 02:
And then, Your Honor, with respect to the arguments in the brief concerning regulatory interpretations, the amount of deference owed, I'll rest on the brief unless the court has any questions.

[00:27:44] Speaker 00:
What is the position of the office as to the intention of the lines that were drawn in the legislation?

[00:27:55] Speaker 00:
Is it simply that they were seeking to

[00:28:00] Speaker 00:
provide some guidelines so that the policy couldn't be abused by opportunistically refiling and prolonging the prosecution?

[00:28:12] Speaker 00:
Or is there more to it than that?

[00:28:17] Speaker 02:
Your Honor, and please correct me if I'm not understanding your question correctly.

[00:28:23] Speaker 02:
So the relevant rule regulations here, 1.702e and 1.703e, were promulgated because Congress told the PTO under 154b3ab to promulgate rules consistent with the statutory language.

[00:28:39] Speaker 02:
And so I don't have any sort of insight

[00:28:43] Speaker 02:
as to how they arrived at this final language, except for the fact that it does closely adhere to and track, not closely adhere to, it actually tracks the statutory language that see delays only available for a patent that was issued under a decision in the review reversing in at first determination of patentability.

[00:29:02] Speaker 00:
And here, I think just with the conversation this morning,

[00:29:07] Speaker 00:
It's apparent that there are perceived ambiguities, in which case we try and figure out what the legislative purpose was within the scope of these ambiguities.

[00:29:22] Speaker 00:
And so that was my question to you in terms of what was Congress trying to achieve?

[00:29:29] Speaker 02:
Yeah, Your Honor, so if Your Honor looks to the legislative history that the parties have cited, what they were trying to achieve was essentially to allow a applicant to recoup time on an issued patent when it was issued as a result of a decision reversing an adverse determination of patentability.

[00:29:50] Speaker 00:
Doesn't that fit squarely within what's happening to this Patent G?

[00:29:56] Speaker 02:
Your Honor, it does not.

[00:29:57] Speaker 02:
Again, with respect to the 476 patent, the relevant claim there, claim 11 of the underlying application, it went to the board, unpatentable as obvious, and it came back down, unpatentable as obvious.

[00:30:11] Speaker 02:
And with respect to claim one of the underlying application for the 796 patent, again, that went all the way up to the D.C.

[00:30:19] Speaker 02:
District Court.

[00:30:20] Speaker 02:
unpatentable because it was anticipated by a particular reference and it was also subject to an ODP rejection.

[00:30:29] Speaker 02:
And when it came back down, although the anticipation rejection was gone, it was still subject to the ODP rejection.

[00:30:35] Speaker 00:
But we're not looking at the claims that were finally held unpatentable.

[00:30:40] Speaker 00:
We're looking at the claims that were held patentable.

[00:30:45] Speaker 02:
Correct.

[00:30:46] Speaker 02:
And there are no claims that were held patentable under any

[00:30:50] Speaker 02:
by any appellate body for either the 796 or the 476 patent.

[00:30:54] Speaker 00:
Well, if nothing was allowed, what's the point of extension?

[00:30:59] Speaker 02:
Well, it's for the other claims that were not before the appellate body.

[00:31:05] Speaker 02:
And so, for example, Judge Lynn's example where a claim that an examiner initially finds is unpatentable

[00:31:14] Speaker 02:
goes up to an appellate body ultimately gets reversed and that for some reason the applicant decides to cancel it.

[00:31:24] Speaker 02:
There's no sea delay there, because one, it doesn't fit with the statutory scheme.

[00:31:28] Speaker 02:
And it's perfectly sensible not to award sea delay there, because what that would invite is gamesmanship, where the patents that were originally in an allowable form or patentable are going to be somehow entitled to sea delay, even though the claim that garnered the sea delay is not ultimately issued.

[00:31:51] Speaker 01:
Hypothetical, I think what you just said, consistent with the regulation 1702E, was that, well, let me back up.

[00:32:01] Speaker 01:
If, in my hypothetical, the claim one goes up on appeal, the rejection is reversed, it goes back to the examiner, if the claim is canceled and the originally allowed claim two is the only one left, then there is no

[00:32:20] Speaker 01:
extension, correct?

[00:32:22] Speaker 01:
Correct, Your Honor.

[00:32:23] Speaker 01:
But if the claim is reversed, claim one goes back, and the applicant for some reason, instead of canceling the claim, decides to make an amendment, a small amendment or an amendment of some sort, then the applicant is still entitled to patent term extension.

[00:32:45] Speaker 02:
As long as there's a reversal of an adverse determination of patentability, yes.

[00:32:49] Speaker 02:
Your Honor, I see that my time is up.

[00:32:51] Speaker 01:
There is a reversal, but the claim is then amended.

[00:32:54] Speaker 01:
So the claim that ultimately issues is different from the one that was on appeal.

[00:33:01] Speaker 01:
So in that circumstance, there is a patent term extension.

[00:33:05] Speaker 01:
But if the applicant, instead of amending the claim, cancels the claim, there's no patent term extension.

[00:33:12] Speaker 02:
Yes, Your Honor.

[00:33:14] Speaker 02:
I think that result, even though it might seem a little odd, is dictated by the plain language of the statute.

[00:33:20] Speaker 02:
I would also just add that in the court's recent decision, I think last year in Chudick, on page 1041 of that opinion, there's a sentence or two about how these choices in prosecution can have an effect on the patent term adjustment based on what you would like to do.

[00:33:42] Speaker 02:
Yes, in the scenarios that your honor just proposed, the results may seem a little odd, but they are dictated by the plain language of the statute.

[00:33:51] Speaker 02:
Thank you.

[00:34:00] Speaker 01:
Mr. Newton, I assume you don't agree with what Mr. Chan just said.

[00:34:04] Speaker 01:
Tell me why he's wrong.

[00:34:09] Speaker 04:
Sure, I'm happy to do that.

[00:34:13] Speaker 04:
There are several reasons.

[00:34:16] Speaker 04:
I'll start with the hypothetical that you gave and this idea that the PTO itself has recognized in 1.702e that there may be further prosecution following an appeal where an adverse determination of patentability is reversed.

[00:34:33] Speaker 04:
And if we apply that rationale, that understanding, to the 796 patent, that's exactly what happened here.

[00:34:40] Speaker 04:
The district court order said remand to the PTAB, and the PTAB said remand to the examiner and proceed in accordance with the district court's opinion.

[00:34:49] Speaker 04:
And that's what happened.

[00:34:50] Speaker 04:
Yes, it was recognized that there was an outstanding double patenting rejection, but the remand order said to

[00:34:57] Speaker 04:
account for that, which the applicant did by canceling claim one, incorporating those limitations, the subject matter that was on appeal into claim two, and the patent was allowed.

[00:35:08] Speaker 04:
That makes sense.

[00:35:11] Speaker 04:
That fulfills the purpose of the statute because that subject matter, if we put aside, okay,

[00:35:17] Speaker 04:
We know the statute doesn't talk about the claims, but if we think about what's the purpose of the appeal is to get the subject matter in those claims allowed, that's exactly what happened with respect to the 796 patent.

[00:35:29] Speaker 04:
It went up on appeal and said the Freeman Prior Art Reference is not enabled.

[00:35:33] Speaker 04:
It can't anticipate this subject matter.

[00:35:35] Speaker 04:
And that subject matter got ultimately incorporated into Claim 2, which issued as Claim 1 of the patent.

[00:35:41] Speaker 04:
And so if we apply this idea that the PTO put forward that you have to somehow trace the issued patent back to the appeal decision, well, that's certainly met here.

[00:35:50] Speaker 04:
That subject matter in Claim 2 doesn't get allowed if SALSTOP was not successful on appeal.

[00:35:57] Speaker 03:
There's also the concern about the fact that if we conclude that the statute requires

[00:36:05] Speaker 03:
a reversal of all pending rejections on a claim, and then a claim comes back after appellate review, either at the board, district court, or wherever, and still has pending rejection outstanding, then that wouldn't comply with the terms of the statute.

[00:36:23] Speaker 04:
Just so I understand correctly, so if there's multiple rejections that go up on appeal, and only one is appealed,

[00:36:29] Speaker 03:
and that's successful right uh... i guess if the claim comes back from the pellet review with uh... rejection still outstanding against that even if there is success to the extent that the appeal managed to knock down one pending rejection against that claim if it still continues to be unpatentable because of the different outstanding rejection that was never appealed

[00:36:57] Speaker 03:
The concern I have is that we cannot say that there was an actual reversal of an adverse determination of patentability, because the conclusion as to patentability against that claim still remains unpatentable.

[00:37:13] Speaker 04:
Well, I think in this situation, I think if you have, in that hypothetical, if you have two statutory grounds, anticipation and obviousness, I understand your point that could be, raise a question,

[00:37:27] Speaker 04:
of whether there is gaming the system by trying to get appeal of one rejection, but keeping the other one out there.

[00:37:34] Speaker 04:
I think in practical terms, that's unlikely to happen.

[00:37:39] Speaker 04:
And what happened here was it was a non-statutory double patenting rejection, which the case law, the N. Ray Mott case says, when the application that that rejection is based on is still pending, there's nothing to do.

[00:37:53] Speaker 04:
It doesn't have force or effect of a real rejection.

[00:37:57] Speaker 04:
And so here, you have a situation where, yes, on paper, there were two rejections.

[00:38:01] Speaker 04:
But one of them was one that didn't have any force or effect because the copending application had not issued.

[00:38:06] Speaker 04:
It didn't issue during the entire course of appeal.

[00:38:08] Speaker 04:
And so when it came back down, yes, Saul Stopp obviated that rejection.

[00:38:12] Speaker 04:
But the real basis of finding that the claims at issue were unpatentable, the anticipation rejection, that was reversed.

[00:38:21] Speaker 01:
Let me just, I'm not sure that Judge Chen's hypothetical

[00:38:27] Speaker 01:
covered this, but let's suppose there's only one claim.

[00:38:30] Speaker 01:
It is rejected 102 anticipated and also rejected as obvious 103.

[00:38:38] Speaker 01:
Both rejections are then appealed and the anticipation rejection is overturned, but the obviousness rejection is sustained.

[00:38:50] Speaker 01:
What happens?

[00:38:51] Speaker 01:
Is there a patent term extension?

[00:38:54] Speaker 04:
I think at that point the claim is dead.

[00:38:58] Speaker 01:
Well, let's assume there's further prosecution, and ultimately the examiner withdraws the 103.

[00:39:03] Speaker 04:
Well, if the examiner withdraws the 103, then yes, the statute would give a term adjustment, because that appeal was still necessary to get rid of that anticipation bar.

[00:39:14] Speaker 04:
That's the point.

[00:39:15] Speaker 04:
I mean, when you have an anticipation rejection, obvious rejection, those are independent bars to patentability.

[00:39:21] Speaker 04:
They prevent you from getting an application until they're lifted, and that's what happens here.

[00:39:26] Speaker 04:
Saul Stopp got the anticipation rejection lifted.

[00:39:29] Speaker 04:
That allowed it to continue to take, quote, or pretty minor steps of obviating a double patenting rejection.

[00:39:35] Speaker 04:
And then the patent was ultimately allowed.

[00:39:40] Speaker 04:
OK.

[00:39:40] Speaker 04:
Thank you very much.

[00:39:41] Speaker 00:
OK.

[00:39:42] Speaker 00:
More questions?

[00:39:44] Speaker 00:
No.

[00:39:44] Speaker 00:
Thank you.

[00:39:45] Speaker 00:
Thanks to both counsels.

[00:39:46] Speaker 00:
The case is taken under submission.