[00:00:01] Speaker 00:
is Sincor v. Vicar, 2020-12-59, Mr. Hurwitz.

[00:00:11] Speaker 03:
Thank you, Your Honor, and may it please the Court.

[00:00:14] Speaker 03:
This case is controlled by Sincor IV.

[00:00:17] Speaker 03:
In both cases, Sincor asked this Court to vacate the decision of the Board that was moot the day that it issued.

[00:00:24] Speaker 00:
But there was no happenstance here.

[00:00:27] Speaker 00:
The patent expired.

[00:00:30] Speaker 00:
You had 13 months, during which time you didn't tell the board that the patent had expired.

[00:00:37] Speaker 00:
This isn't the same as the other Sinclair case.

[00:00:41] Speaker 00:
And vacator is equitable.

[00:00:45] Speaker 03:
So respectfully, Your Honor, ViCOR made the same argument with respect to literally the identical 13-month period in SYNCOR 4.

[00:00:53] Speaker 03:
If you look at page 610 of the Joint Appendix, they say that SYNCOR sat on its hands for 13 months.

[00:00:58] Speaker 03:
They're talking about the same period from the expiration of the same patent family in January of 2018 through the decision of the board in that case, which issued on the same day in February of 2019.

[00:01:10] Speaker 03:
So literally, the same argument, considering the same 13-month period, was made and rejected in that case.

[00:01:16] Speaker 01:
But this is different.

[00:01:17] Speaker 01:
But the facts here were different.

[00:01:19] Speaker 01:
And you could have notified the PTO, and maybe we wouldn't be here spending our time if you had done that.

[00:01:25] Speaker 01:
And that's different than the situation in the other case, right?

[00:01:29] Speaker 03:
It is not.

[00:01:30] Speaker 03:
As of the expiration of patents, one family, they expire in January of 2018.

[00:01:38] Speaker 03:
As of the expiration of the patents, at that moment, there are pending before the board simultaneously the board decision here, as well as the board decision in the 190 appeal, the subject of same court four, both simultaneously pending.

[00:01:54] Speaker 03:
In both cases, by court urge this court, that our failure to notify the board during the 13-month period

[00:02:03] Speaker 03:
from January of 2018, through expiration in February 2019, was an equitable reason for the denial of Aikido.

[00:02:11] Speaker 03:
In Singapore 4, that argument was rejected.

[00:02:15] Speaker 03:
It is literally the same period.

[00:02:17] Speaker 03:
And it was properly rejected and applies here.

[00:02:20] Speaker 03:
because we raised the expiration of the patents in the very first substantive filing that we made below.

[00:02:27] Speaker 03:
Now, honestly, we expected, given the remand from Sincor II, which invited the board to reassess secondary considerations in light of some developments from another Sincor appeal, that there would be briefing on that question of what happens with the secondary considerations in light of the decision in an earlier appeal.

[00:02:46] Speaker 03:
So we were prepared to address that, as well as the expiration of the patents once the board issued an order on briefing.

[00:02:53] Speaker 03:
That order never came.

[00:02:54] Speaker 03:
They just decided the merits after the expiration of the patents.

[00:02:59] Speaker 03:
And under the Patent Office of Practices, what they say about re-exam, and this is in MPEP 2609,

[00:03:07] Speaker 03:
is that any paper not specifically called for in the rules shall not be filed.

[00:03:12] Speaker 03:
And in our experience in these re-exams, and there's been many with Vicor, papers that make arguments for submissions beyond what is expected have been consistently expunged.

[00:03:22] Speaker 03:
Now, Vicor apparently agreed that no submission was appropriate about the expiration of the patents because they didn't make a submission in this case or in the prior one either.

[00:03:31] Speaker 03:
Both parties simply waited for the board to issue its decision.

[00:03:37] Speaker 03:
Again, the argument was made in SYNCORP4 that that was an equitable reason to deny a vacater.

[00:03:43] Speaker 03:
It was not accepted.

[00:03:45] Speaker 03:
This case is indistinguishable in any material respect from SYNCORP4.

[00:03:50] Speaker 03:
Now, there is one development I do want to address, which is the Applebee Qualcomm case that was the subject of our 28-J submission back in November.

[00:04:04] Speaker 03:
The dividing line between our case and Apple, in our view, is the same line that the Apple court drew between it and the DC Circuit's opinion in the Affleck case.

[00:04:13] Speaker 03:
This is at footnote six, the Apple opinion.

[00:04:16] Speaker 03:
Affleck is a case like ours where mootness arose before the case reached the federal courts.

[00:04:21] Speaker 03:
Nonetheless, the DC Circuit said, well, this is moot.

[00:04:23] Speaker 03:
We don't want a decision sort of hanging out there and having potential legal consequence.

[00:04:27] Speaker 03:
So we're going to vacate consistent with Munsingware and the US bank work.

[00:04:31] Speaker 03:
When Apple was asked the oral argument about the justification for a Monsignor vacater in agency case where mootness arose before the notice of appeal, Apple cited Affleck.

[00:04:42] Speaker 03:
And what this court said in Affleck, excuse me, in Apple was that Affleck is different because Affleck did not involve voluntary settlement as the basis for mootness.

[00:04:52] Speaker 03:
as this case, as Apple does.

[00:04:54] Speaker 03:
Now, if that's the dividing line, long-term settlement, we're comfortably on the Affleck side with Sincor 4, where, again, Vicor made exactly the same jurisdictional argument about how the movement arose before the case reached this court, or the federal courts in general.

[00:05:09] Speaker 03:
That's at 608 to 609 of the Joint Appendix.

[00:05:12] Speaker 03:
Court wasn't persuaded.

[00:05:14] Speaker 03:
The only distinction that Vicor identifies that's meaningful between this case and Sincor 4

[00:05:21] Speaker 03:
is not sufficient to actually distinguish the case.

[00:05:23] Speaker 03:
That distinction is that Viceroy says in Sinclair IV, the court had jurisdiction or what they call a jurisdictional foothold over part of the appeal, the part that went to the original claims in the patent, court had jurisdiction on the merits to consider those, did consider those.

[00:05:39] Speaker 03:
And Viceroy says that somehow justifies the vacater based on mootness of the new claims.

[00:05:47] Speaker 03:
They have this sort of theory of transitive jurisdiction, commutative jurisdiction.

[00:05:51] Speaker 03:
They don't set a case that actually does that.

[00:05:53] Speaker 03:
And the reason is because the Supreme Court has explicitly rejected it.

[00:05:58] Speaker 03:
In Daimler-Kreisler against Kuno and other cases, the Court has said there is no such thing as commutative jurisdiction.

[00:06:03] Speaker 03:
You need to establish jurisdiction with respect to each claim for relief and each form of relief you're seeking separately.

[00:06:09] Speaker 03:
So the jurisdictional basis in Sinclair 4 and this case with respect to the amended claims is the same.

[00:06:15] Speaker 03:
It's not jurisdiction to consider the merits.

[00:06:17] Speaker 03:
It's the power, as part of the judicial process and administration, to vacate decisions that have become moot through happenstance.

[00:06:26] Speaker 01:
What is your view of it?

[00:06:28] Speaker 01:
If I'm not mixing this up with another case, I think that FICOR is saying, well, if you all decide to vacate, you ought to tell the board to do

[00:06:38] Speaker 01:
do or say certain things.

[00:06:41] Speaker 01:
Do you find that controversial or inappropriate or what?

[00:06:45] Speaker 03:
I think it's inappropriate.

[00:06:49] Speaker 03:
I think it's certainly not what happened in Sinclair IV.

[00:06:51] Speaker 03:
But the general rule that we would point the court to is that the idea of what's going to happen with a given judgment and the effect of that judgment or the effect of an opinion

[00:07:02] Speaker 03:
What effect that should have, that's for a future court to decide in the context of a concrete dispute between the parties.

[00:07:08] Speaker 03:
And I wouldn't be surprised if it turns out to be this court and these parties.

[00:07:12] Speaker 03:
But the point is, you address the question of the effect of the decision in some future case.

[00:07:18] Speaker 03:
If the board turns out to be confused about what the significance of the vacator is, as in the Valspar 2 case that Bicor cited, came back after a vacator because the board did something unusual, then, of course, as in Valspar 2, this court sees the vacator.

[00:07:32] Speaker 01:
So what happened in the earlier Sinclair case?

[00:07:34] Speaker 01:
Do we know?

[00:07:35] Speaker 01:
I mean, is the board acted on that yet?

[00:07:37] Speaker 01:
Or we send it back to the board.

[00:07:39] Speaker 03:
That's correct.

[00:07:40] Speaker 03:
So that Sinclair case is back, but not on those claims.

[00:07:44] Speaker 01:
Back here?

[00:07:44] Speaker 01:
Back here.

[00:07:45] Speaker 03:
It's not fully briefed yet.

[00:07:46] Speaker 03:
It's not on the new claims, it's just that, and we'll argue that case another day, but Viper believes that it can appeal other rejections.

[00:07:57] Speaker 03:
in this new appeal that weren't the subject of the prior appeal.

[00:08:00] Speaker 03:
Basically, it's more merits on the original claims.

[00:08:03] Speaker 03:
In our view, it ought to have been over from the last appeal, if you read the opinion.

[00:08:07] Speaker 01:
But that's not what we're saying.

[00:08:09] Speaker 01:
What we did in the earlier case and we did here is we send it back, if that's what we decide to do, and the board just pro forma vacates its decision.

[00:08:18] Speaker 01:
How does this work normally?

[00:08:20] Speaker 01:
I don't want you to talk about your other case.

[00:08:22] Speaker 03:
No, no, that's fine.

[00:08:23] Speaker 03:
What we think should happen here, and I don't think Bicor actually disagrees.

[00:08:26] Speaker 03:
I think they're just concerned about the possibility of, as in Valspar, of a misunderstanding.

[00:08:31] Speaker 03:
They can speak for themselves.

[00:08:33] Speaker 03:
What we think should happen here is the decision should be vacated.

[00:08:36] Speaker 03:
Those claims can't be added to the patent, clearly, the amended claims.

[00:08:40] Speaker 03:
All of the claims that were the subject of the re-exam on the merits, we've lost.

[00:08:44] Speaker 03:
They are going to be canceled.

[00:08:46] Speaker 03:
So the re-examination certificate should issue indicating that we lost in all the original claims that were the subject of the re-exam.

[00:08:53] Speaker 03:
And that's it.

[00:08:54] Speaker 03:
We don't want a further decision in our favor.

[00:08:56] Speaker 03:
We don't want any like further, you know, just issue the re-exam certificate.

[00:08:59] Speaker 03:
This is over.

[00:09:00] Speaker 03:
The only thing that we're here to fight about, which again, honestly, after Sincor 4, this case was held pending Sincor 4.

[00:09:07] Speaker 03:
That's why the board decisions from the same day would be so far apart here.

[00:09:11] Speaker 03:
We thought that this would be just a joint motion to vacate, because the cases were identical in our view.

[00:09:18] Speaker 03:
And that's why we said it should be held.

[00:09:19] Speaker 03:
They argued that they should be argued together.

[00:09:21] Speaker 03:
So anyway, at this point, the only thing we want to happen is get rid of this decision that could spawn legal consequence, which is the point of a Muncie where they could argue.

[00:09:33] Speaker 02:
The other side, Vicor has an argument that

[00:09:37] Speaker 02:
The only way we have the power to vacate under Munzingware these claims is because in Sinclair IV, we had jurisdiction to consider the merits of other claims.

[00:09:51] Speaker 02:
And you're saying there's no case that points in that direction.

[00:09:57] Speaker 02:
Bancorp, I believe.

[00:09:58] Speaker 02:
They do.

[00:09:58] Speaker 03:
They cite the portion of US Bancorp that's then quoting the, I think it's a Harlan concurrence in Chandler, talking about ancillary powers.

[00:10:08] Speaker 03:
But that's not a case of commutative jurisdiction, where the court is exercising jurisdiction to issue Monsignor Vacater because of jurisdiction over the merits.

[00:10:17] Speaker 03:
Bancorp is a case where there was no jurisdiction, undisputedly moved across the board.

[00:10:22] Speaker 03:
And actually, the court declined to issue Monsignor Vacater because, as an appell, there was the settlement.

[00:10:26] Speaker 03:
So factually, it doesn't fit.

[00:10:29] Speaker 03:
And the Chandler case talking about ancillary powers, it's literally talking about the statute that empowers the court to appoint a clerk of the court.

[00:10:36] Speaker 03:
I mean, it has literally nothing to do with this idea of commutative jurisdiction.

[00:10:40] Speaker 03:
And it's not like Sinclair IV is an outlier.

[00:10:44] Speaker 03:
Courts, including this court, have routinely vacated agency decisions that were moot before they reached the courts.

[00:10:50] Speaker 03:
So in our brief, we cite, of course, St.

[00:10:52] Speaker 03:
Corp.

[00:10:52] Speaker 03:
4, this court's decision in Tunic, and then DC Circuit decisions, Aflac, the one raised at Apple, but also Tennessee Gas and M Class Mining just last year in the DC Circuit.

[00:11:03] Speaker 03:
This is just ordinary practice under Muncie, we're in our field.

[00:11:07] Speaker 03:
With that, unless there are questions, I reserve the balance of my time.

[00:11:11] Speaker 00:
We will save that time for you.

[00:11:19] Speaker 04:
the court, what we need to address is standing in light of the 28-J letters that we filed with respect to the Apple decision.

[00:11:27] Speaker 04:
Apple makes clear that CIMCOR's problem here today is not muteness, it is lack of standing, and that in the absence of standing, this court may not apply the Munsingware relief.

[00:11:38] Speaker 04:
This case is on all fours with Apple, and it is distinct from Sinclair IV, where there were live issues.

[00:11:44] Speaker 04:
There was standing, at least with respect to the original claims, on appeal.

[00:11:50] Speaker 04:
And there is no conflict between Apple, that this court decided, and this court's earlier decisions, such as Tunic.

[00:11:59] Speaker 04:
Because Tunic was an MSPB appeal, and Congress passed a statute that expressly prohibited

[00:12:07] Speaker 04:
the MSPB from rendering advisory opinions.

[00:12:11] Speaker 04:
This court in Tunic found that that statute was violated and vacated those advisory opinions for that reason, not because of Monsignor, or indeed, never citing Monsignor were the Monsignor progeny cases.

[00:12:32] Speaker 04:
With respect to the equities, I do want to point out that they talk about the 13-month gap.

[00:12:41] Speaker 04:
It is not the same relevant gap here as the timelines at the Redbrief pages 9 and 10 show.

[00:12:50] Speaker 04:
There was only the tail portion of one claim, claim 34, that was subject to the new ground of rejection.

[00:12:58] Speaker 04:
That new ground of rejection was issued by the board in May 2016.

[00:13:04] Speaker 04:
New claims 35 and 38 were finally rejected.

[00:13:08] Speaker 04:
So those were definitely final.

[00:13:12] Speaker 04:
And it was merely a matter of addressing by the examiner and ultimately rendering final the rejection of claim 34.

[00:13:20] Speaker 04:
So the bulk of the claims, the new claims, at issue in the SYNCOR 4 re-exam were finally decided prior to the expiration of the 190 patent.

[00:13:35] Speaker 02:
But the only final appealable board decision from which the patent owner could appeal, that decision issued 13 months after the patent expired.

[00:13:47] Speaker 02:
Just like here, the patent expired 13 months before the patent board issued its final decision.

[00:13:56] Speaker 02:
Is that right?

[00:14:00] Speaker 02:
You're not suggesting that the initial board decision

[00:14:04] Speaker 02:
that included the new grounds of rejection, that CINCOR could have appealed to the Federal Circuit some portions of that board decision.

[00:14:15] Speaker 04:
They would have had to wait for the rejection of claim 34 to become final.

[00:14:20] Speaker 02:
So in that sense, we have an apples to apples comparison with CINCOR 4 in the sense that we have, like here, a patent that literally expired 13 months before the board issued its decision.

[00:14:35] Speaker 04:
But SYNCOR could have, alerting the board as to the impending expiration on January 2018, would not have affected claims 34 through 38.

[00:14:49] Speaker 04:
So just, again, weighing the equities here, it goes to the equities.

[00:14:54] Speaker 04:
Could have and should have SYNCOR alerted the board here that for 13 months, leading up to the February 2019 board decision,

[00:15:04] Speaker 04:
that the only claims at issue were already moot.

[00:15:09] Speaker 02:
But claim 34 was not moot, right, in Sinclair IV?

[00:15:15] Speaker 04:
The damage was already done, Your Honor, by the board to claim 34.

[00:15:20] Speaker 04:
It was simply a matter of the examiner reconfirming that, considering that rejection and then adopting it.

[00:15:32] Speaker 02:
OK.

[00:15:34] Speaker 02:
You can keep going.

[00:15:40] Speaker 04:
We enumerate multiple routes that SYNCOR could have and should have used to bring the expiration to the board's attention.

[00:15:50] Speaker 04:
The first one is very simple.

[00:15:52] Speaker 04:
It's the most direct.

[00:15:53] Speaker 04:
Simply file an amendment canceling those two claims.

[00:15:57] Speaker 04:
And we cite PTO rule 41.63, titled amendments and affidavits or other evidence after appeal.

[00:16:06] Speaker 04:
There is no time limit for a patent owner to file an amendment canceling claims during a PTAT appeal.

[00:16:13] Speaker 01:
Is there anything that obligates them to have notified the board?

[00:16:17] Speaker 04:
You know, I don't want to invoke duty of candor, but I

[00:16:25] Speaker 04:
I want to draw a distinction between their obligation to have alerted the board from coming here with clean hands and seeking- Why didn't you?

[00:16:38] Speaker 01:
Could you have done it, just to say you could have done it?

[00:16:40] Speaker 01:
Why didn't you?

[00:16:41] Speaker 04:
Yes.

[00:16:41] Speaker 04:
Well, for two reasons.

[00:16:43] Speaker 04:
The first is not being the patent owner.

[00:16:48] Speaker 04:
And there was a dispute over the priority to this complicated chain of

[00:16:55] Speaker 04:
applications, including CIPs with new matter, there was a dispute that would affect the expiration date.

[00:17:02] Speaker 04:
And second, we did not docket the expiration of that patent.

[00:17:06] Speaker 04:
We were the appellee.

[00:17:08] Speaker 04:
And we understood that the board would simply decide the case on the briefing.

[00:17:14] Speaker 04:
But I think the upshot of denying SYNCOR's relief here is that

[00:17:21] Speaker 04:
All parties will be on notice that they need to dock it and track the expiration of a patent.

[00:17:28] Speaker 01:
But wait, you just said, I don't understand.

[00:17:29] Speaker 01:
You just said there was a dispute or some lack of clarity as to when the patent is.

[00:17:35] Speaker 01:
So was that something that the board would have had to adjudicate or consider?

[00:17:39] Speaker 01:
Is that why the board didn't do this on its own?

[00:17:41] Speaker 01:
Because they didn't know whether or not the patent had expired?

[00:17:44] Speaker 04:
I believe so.

[00:17:45] Speaker 04:
The terminal disclaimer, which ties the expiration of this patent to another patent, was not an exhibit that... So you think if there wasn't the confusion, the board would ordinarily...

[00:18:01] Speaker 01:
figure it out itself.

[00:18:03] Speaker 04:
I do not think that the board monitors the expiration of patents.

[00:18:08] Speaker 04:
And the CFR and the MPEB don't say that the PTAB needs to constantly monitor expiration.

[00:18:17] Speaker 01:
Well, maybe there's a difference between the word monitor and notice.

[00:18:21] Speaker 01:
I mean, we get cases all the time.

[00:18:23] Speaker 01:
And typically, even if it's not an issue or whatever, we notice when the patent issued and when it's set to expire.

[00:18:31] Speaker 01:
This is what they do.

[00:18:33] Speaker 01:
So maybe there's no affirmative obligation for them to monitor, but you think somebody might notice.

[00:18:41] Speaker 01:
And your suggestion here is that they didn't notice because there was some confusion about that.

[00:18:47] Speaker 04:
And I do not think that the board routinely

[00:18:51] Speaker 04:
goes, has somebody checking the expiration of patents that are pending on appeal at the PTAB.

[00:18:59] Speaker 04:
As I think this court also does not routinely do on its own, it is the obligation, or at least the expectation, of the parties to bring that to the board's attention.

[00:19:14] Speaker 00:
Of course, the expiration doesn't eliminate the possibility of damages

[00:19:21] Speaker 00:
if a patent is valid?

[00:19:24] Speaker 04:
Yes, with respect to the original claims.

[00:19:27] Speaker 04:
But the addition of new claims is limited only to the still pending, non-expired portion of the patents.

[00:19:37] Speaker 01:
As far as what I asked your friend about, which is that you say if we send it back and tell them to vacate, they should include these caveats.

[00:19:47] Speaker 01:
Is there any case in which we've done that before in terms of explaining the consequences of a vacator?

[00:19:53] Speaker 01:
Is there another case you know where our court or some other court has done that?

[00:19:58] Speaker 04:
I'm not aware of such instructions, but I was counsel to Valspar in that case.

[00:20:04] Speaker 04:
So I have lived through that experience of the board misconstruing a vacatur under Munsingware as reinstating the examiner decision.

[00:20:16] Speaker 04:
And that necessitated another appeal here, which is

[00:20:20] Speaker 04:
The real reason we want to cut off these Munsingware-only type of appeals, where there is no standing, and all that they're requesting is Munsingware relief, which is improper after Apple, when there is no standing.

[00:20:36] Speaker 00:
And Venkatar also wastes the effort of past tribunals.

[00:20:42] Speaker 04:
Exactly right, yes.

[00:20:44] Speaker 04:
And those were arguments we made in opposition to Sincor's request for rehearing at the board.

[00:20:52] Speaker 04:
We said that the public interest here does not favor vacating the board's decision.

[00:20:57] Speaker 04:
And at appendix page 15, the board agrees with us, citing specifically the pages where we made those arguments.

[00:21:06] Speaker 02:
I'm not sure I understand the standing argument you're making, because obviously,

[00:21:12] Speaker 02:
The patent owner, in this instance, received an adverse decision from which it wanted to appeal.

[00:21:17] Speaker 02:
And that's what happens typically when people appeal.

[00:21:21] Speaker 02:
And then Munson Ware tells us sometimes there can be a mooting event.

[00:21:27] Speaker 02:
And when that occurs, and the mooting event is something by happenstance, by circumstance, not anything that was within the control of the appellant, then it's

[00:21:39] Speaker 02:
pretty standard practice for the appellate courts to vacate the underlying decision because the appellant was denied the opportunity to challenge the merits.

[00:21:56] Speaker 02:
Why do we have to worry about standing in that context?

[00:22:00] Speaker 02:
There was an adverse decision.

[00:22:03] Speaker 02:
It's sitting on the books.

[00:22:06] Speaker 02:
the appellate court, like us here, would have no power to overturn that decision.

[00:22:12] Speaker 02:
So why, under just normal, conventional, one-singular practice, they, in a sense, do have standing, or at least this court, does have the ancillary power, outside of your standard live case or controversy requirement, to exercise our authority to vacate the underlying decision?

[00:22:36] Speaker 04:
SYNCOR has not alleged that it has standing.

[00:22:39] Speaker 04:
SYNCOR has not alleged that it has any injury with respect to that decision.

[00:22:45] Speaker 04:
Merely that Monsignor can apply to a case where there was no standing at the outset.

[00:22:53] Speaker 02:
But we have this opinion called SYNCOR 4 that came out that is identical in so many ways to the circumstance here.

[00:23:05] Speaker 02:
And it would look very peculiar for this court to issue this.

[00:23:09] Speaker 02:
I don't know what this is, SYNCORP24, where we would say, we're going to do the precise opposite of what we did in SYNCORP4.

[00:23:18] Speaker 04:
Your Honor, respectfully, it would not be the opposite, because SYNCOR 4 first addresses the live dispute over the original claims, which gave the court jurisdiction.

[00:23:27] Speaker 04:
And there was standing to address it.

[00:23:29] Speaker 02:
Let's put that to the side if I don't agree with that.

[00:23:32] Speaker 04:
And immediately, then, we turn our attention to the board's decision on claims 34 through 38.

[00:23:41] Speaker 04:
They grant the same relief that was sought, vacating the board decisions with respect to both the original claims and the new proposed claims.

[00:23:53] Speaker 01:
So that establishes standing here and no standing there because?

[00:24:00] Speaker 04:
Well, the issue of cumulative jurisdiction was not addressed or briefed

[00:24:06] Speaker 04:
by the parties in SYNCOR 4.

[00:24:08] Speaker 04:
Certainly, SYNCOR 4 doesn't explain the ability to consider that.

[00:24:14] Speaker 04:
I think we just presume, based on what the court says, they move directly from addressing the live dispute to addressing the ancillary issue.

[00:24:24] Speaker 04:
But here, there are no live issues.

[00:24:27] Speaker 04:
There never were on the day that notice of appeal was filed, which makes this case exactly like Apple.

[00:24:34] Speaker 04:
And with respect to, you know,

[00:24:36] Speaker 02:
In Apple, there was a settlement, right?

[00:24:39] Speaker 04:
Yes.

[00:24:39] Speaker 04:
Apple, there was a settlement.

[00:24:41] Speaker 04:
And here, there is a patent expiration.

[00:24:43] Speaker 04:
St.

[00:24:46] Speaker 04:
Clair concedes that there is no dispute.

[00:24:48] Speaker 04:
So there is no difference between those two jurisdiction or controversy destroying events.

[00:24:56] Speaker 04:
And with respect to the standard practice under Monsignor, the best argument that Simcor raises is the Bancorp statement about the requirements of Article III that indeed were never met.

[00:25:12] Speaker 04:
Sometimes it's italicized in the reply brief.

[00:25:15] Speaker 04:
But if you look at that sentence at page 21 of Bancorp, Bancorp's not talking about Munsing were vacatour in that sentence.

[00:25:23] Speaker 04:
They're talking about the ability of a court to take any action with respect to a piece of litigation once it has been determined that the requirements of Article III no longer are or indeed never were met.

[00:25:35] Speaker 04:
Next sentence, that proposition is contradicted whenever an appellate court holds that a district court lacked Article 3 jurisdiction in the first instance, vacates the decision, and remands with directions to dismiss.

[00:25:49] Speaker 04:
That's not mootness based on and vacating based on Munsingware.

[00:25:56] Speaker 04:
If a plaintiff files a complaint and has no standing, and the district court then issues merits decisions, that's an Article III violation.

[00:26:07] Speaker 04:
And on appeal, the Court of Appeals wouldn't be considering the equities and merits and equities under its discretion under Monsignor.

[00:26:15] Speaker 04:
The court must vacate that.

[00:26:17] Speaker 04:
It's not mootness.

[00:26:19] Speaker 04:
Only in the next sentence does Bancorp then say, in cases that become moot while awaiting review, so only then is it talking about mootness and monsignor.

[00:26:32] Speaker 04:
And just finally, on the equities, imagine if this patent were expiring tomorrow.

[00:26:39] Speaker 04:
And we're here today arguing before you on the merits of the rejections.

[00:26:43] Speaker 04:
And nobody tells you that the patent is going to expire.

[00:26:47] Speaker 04:
You take the case under consideration, duly issue your decision, and only then, affirming the board,

[00:26:55] Speaker 04:
on the rejections.

[00:26:57] Speaker 04:
Sinclair then files a request for rehearing saying that Monsignor requires you to vacate your decision and then says, well, under Bancorp, the only thing that matters is we did not cause the patent to expire when it did.

[00:27:12] Speaker 04:
Indeed, Congress did by setting a 20-year term.

[00:27:15] Speaker 04:
So you need to, this court must then vacate its own decision.

[00:27:21] Speaker 04:
That clearly is an absurd result and is too much of a narrow focus when equity requires a broader purview.

[00:27:30] Speaker 00:
Thank you, counsel.

[00:27:31] Speaker 00:
Thank you.

[00:27:32] Speaker 00:
Mr. Horowitz has some rebuttal time.

[00:27:36] Speaker 03:
Thank you, Your Honor.

[00:27:37] Speaker 03:
I want to address the hypothetical and then make two quick points.

[00:27:40] Speaker 03:
So just on that last hypothetical, if we had argument before the board, the day before the patent had expired, that would have been an opportunity for us to tell the board the patent was going to expire.

[00:27:50] Speaker 03:
It would also have been an opportunity for my court to tell the board the patent was going to expire.

[00:27:54] Speaker 03:
And I would be shocked if neither side told the board the patent would expire.

[00:27:57] Speaker 03:
The problem was there were no substantive filings below between the expert, at any point, actually, after remand until the board issued its decision.

[00:28:05] Speaker 03:
Now, the two points I want to make.

[00:28:09] Speaker 02:
But theoretically, I guess in response to your opposing counsel's hypothetical, your position would be, yes, the Federal Circuit would be required to vacate its decision, because it issued an opinion on an expired patent, or at least expired newly added claims.

[00:28:34] Speaker 03:
No, I don't think that.

[00:28:35] Speaker 03:
And the reason is, as U.S.

[00:28:37] Speaker 03:
Bancorp makes clear, actually, even in the settlement context, it's a case-by-case assessment every single time.

[00:28:42] Speaker 03:
It's just that in this case, we have the facts that are in every material respect the same as in Sinclair IV.

[00:28:48] Speaker 03:
That's what makes it easy.

[00:28:49] Speaker 03:
But of course, if we were to come, or Bancorp, by the way, the appeal could have gone either way, just as it could have gone either way in this case.

[00:28:56] Speaker 03:
The losing party, after the hypothetical,

[00:28:59] Speaker 03:
comes to this court and says, by the way, the patent expired.

[00:29:01] Speaker 03:
You had one day to issue the opinion.

[00:29:02] Speaker 03:
We were counting on that one day.

[00:29:05] Speaker 03:
Didn't happen.

[00:29:05] Speaker 03:
And then somebody comes.

[00:29:09] Speaker 03:
Court would have the equitable power to weigh the facts and circumstances.

[00:29:12] Speaker 03:
In this case, they're the same facts and circumstances.

[00:29:14] Speaker 00:
Is the standard here, abuse of discretion?

[00:29:18] Speaker 03:
It isn't.

[00:29:19] Speaker 03:
And our position is laid out in the blue brief on that.

[00:29:23] Speaker 03:
We have a standard of review section.

[00:29:24] Speaker 03:
We explain that review is de novo.

[00:29:27] Speaker 03:
Now, Vicor could have disagreed with that.

[00:29:30] Speaker 03:
They don't have a standard of review section in their brief, which under this Court's Rule 28B suggests that they agree with ours.

[00:29:35] Speaker 03:
So any argument that this is reviewed for abuse of discretion has been waived.

[00:29:40] Speaker 03:
But we don't think there needs to be an argument about that, because it's clear in our view that the legal question of Munsing were vacueter is de novo.

[00:29:48] Speaker 03:
I just want to note, picking up on where Judge Chen was, we disagree with the decision below on the merits.

[00:29:55] Speaker 03:
We think it's wrong.

[00:29:57] Speaker 03:
We're going to fight some of those same fights in future cases, including cases that are currently pending before this court, potentially.

[00:30:04] Speaker 03:
But we know that we can't ask the court to address the issues on the merits.

[00:30:08] Speaker 03:
That's why we're here asking for the Monsignor vacator.

[00:30:10] Speaker 03:
And that's why Vicor is so vigorously opposing it, because it matters.

[00:30:15] Speaker 03:
This court shouldn't have to address what those future consequences may be.

[00:30:19] Speaker 03:
We shouldn't have to have a fight in a future case about those future consequences, because the decision should be vacated.

[00:30:24] Speaker 03:
It has been rendered moot through happenstance.

[00:30:26] Speaker 03:
We have no control over it, just as in Sinclair IV.

[00:30:30] Speaker 03:
The last point I want to make is on the equities.

[00:30:33] Speaker 03:
You heard my friend say,

[00:30:35] Speaker 03:
that this case is different from Sincor 4 on the equities.

[00:30:38] Speaker 03:
I want to go back to the joint appendix and just reflect on exactly what the court heard from Vicor in the last case.

[00:30:45] Speaker 03:
Vicor said, Sincor stood silent as its patent expired in January of 2018 and never brought it to the attention of the board, either prior to the board's February 20, 19 decision or prior to Sincor's notice of appeal to this court in March 2019.

[00:30:59] Speaker 03:
Every word of that sentence

[00:31:03] Speaker 03:
the same argument you heard today and in the briefs.

[00:31:06] Speaker 03:
It's the same 13-month period.

[00:31:08] Speaker 03:
That argument was considered in Sincor IV.

[00:31:11] Speaker 03:
It was rejected.

[00:31:12] Speaker 03:
This case is indistinguishable in any material respect.

[00:31:15] Speaker 03:
The court should follow the outcome in Sincor IV and vacate the decision below.

[00:31:19] Speaker 00:
Thank you, counsel.

[00:31:21] Speaker 00:
We appreciate the arguments of both parties and the case is submitted.