[00:00:00] Speaker 06:
Our next argued case is appeal number 22-1260.

[00:00:02] Speaker 06:
This is Sniper Technologies Limited versus Rockefeller University.

[00:00:09] Speaker 06:
Okay, Mr. Matsui, whenever you're ready.

[00:00:12] Speaker 03:
May it please the court, Brian Matsui for Sniper.

[00:00:14] Speaker 03:
The board made three errors in canceling Sniper's pure AIA already issued claims.

[00:00:21] Speaker 03:
First,

[00:00:22] Speaker 03:
It used Section 102G to invalidate Snipers patents, which had satisfied all the patentability requirements in order to be issued.

[00:00:30] Speaker 03:
Second, it subjected Snipers patents to an interference, even though Congress eliminated interferences for peer AIAA patents.

[00:00:39] Speaker 03:
And third, the board refused to decide as moot a threshold issue that was determinative

[00:00:45] Speaker 03:
of whether Rockefeller even had standing to be in an interference.

[00:00:49] Speaker 03:
Now, the effect of those three errors, if not corrected by this court, is that Congress utterly failed in transforming the US patent system to a first inventor to file system.

[00:01:00] Speaker 03:
Until the last pre-AIAA patent or last mixed AIAA patent issues, pure AIAA patents are always going to be subject to the possibility of being dragged into an interference.

[00:01:13] Speaker 06:
Whichever way we rule, there's going to be some arguable distortion in the system.

[00:01:22] Speaker 06:
But can you just respond to the other side's core argument, which is that although your patents are no longer eligible to provoke an interference,

[00:01:35] Speaker 06:
Nevertheless, the Rockefeller patent application is still eligible to provoke an interference.

[00:01:42] Speaker 06:
And under old section 135, it's permitted to provoke an interference with any unexpired patent, quote unquote.

[00:01:51] Speaker 06:
And all of your patents are currently unexpired patents.

[00:01:56] Speaker 06:
So under that plain reading of the text,

[00:02:01] Speaker 06:
Obviously, we're all textualists now.

[00:02:04] Speaker 06:
Why wouldn't that be an okay takeaway from understanding what to do here?

[00:02:10] Speaker 03:
Well, I think there's two points in your question, I think, that need to be addressed.

[00:02:15] Speaker 03:
The first is whether or not a sniper's patent even could be subject to an interference, and that's one question.

[00:02:20] Speaker 03:
And the second is, regardless of whether or not they're subject to an interference or not, whether or not they can be invalidated,

[00:02:27] Speaker 03:
based upon invention priority in 102G.

[00:02:29] Speaker 06:
Well, let's just start with the text of 135.

[00:02:31] Speaker 06:
I mean, if we want the court to write a reverse here, we would have to answer for what the old 135 says about any unexpired patent and how sniper's patents are all unexpired, yet somehow they don't fit within the term on any unexpired patent.

[00:02:53] Speaker 03:
Why would that be?

[00:02:56] Speaker 03:
Let's say, first of all, even assuming that the interference did apply to Sniper's patents via 135, that still doesn't answer the question as to whether or not you could invalidate the patent, because it's not subject to any sort of patentability requirement based upon first to invent.

[00:03:14] Speaker 03:
That comes from 102G.

[00:03:18] Speaker 03:
you know you're it seems like you're ready running to a backup or no i mean i would rather hear your primary argument i mean i think that our primary our patents do not qualify under that term any expired certainly are i mean i think that the first thing to do is look at what the a i a did it eliminated one thirty five its entirety for pure a i a patents

[00:03:39] Speaker 03:
it replaced 135 with derivation proceedings.

[00:03:43] Speaker 03:
So, in effect, 135 just doesn't exist.

[00:03:46] Speaker 03:
It's erased from the books for pure AIA patents.

[00:03:49] Speaker 03:
Now, in Section 3 and 2 of the AIA, what it did is it said for certain patents, these mixed applications that have some AIA claims and some pre-AIA claims

[00:04:04] Speaker 03:
the provisions of 102G and 135 shall apply.

[00:04:10] Speaker 03:
And so that means that for those patents, the provisions, those patents, the mixed patents, those provisions of 135 shall apply.

[00:04:20] Speaker 03:
And that means that they can be an application that would start an interference.

[00:04:26] Speaker 03:
They could be any application that could be drawn into an interference.

[00:04:31] Speaker 03:
And they, if once issued, could be any unexpired patent

[00:04:34] Speaker 03:
that's brought into an interference.

[00:04:37] Speaker 03:
That's what 135 applies to, the pre-AIA 135 applies to today, because Congress eliminated that provision otherwise.

[00:04:48] Speaker 03:
And so it's not really helpful, I think, for the other side just to point to any unexpired patent, because any unexpired patent has to be read in the context of what Congress did when it erased 135

[00:05:02] Speaker 03:
in its entirety for pure AIA patents, and then in 3N2 said those provisions shall apply when we're talking about these mixed patents.

[00:05:13] Speaker 03:
And those provisions include the application that starts it and that any unexpired patent.

[00:05:20] Speaker 03:
That's basically why, when you look at what Congress did, they basically transformed this system from a first to invent system to a first inventor to file system.

[00:05:32] Speaker 03:
They wanted to eliminate interferences.

[00:05:34] Speaker 03:
They wanted to eliminate invention priority, because they knew that the United States patent system, as you know, was out of step with the rest of the world.

[00:05:43] Speaker 03:
And inventors had to basically maintain all these costly records that were impossible to keep, to have these potential invention priority fights down the line.

[00:05:53] Speaker 03:
And that's what Congress did.

[00:05:56] Speaker 04:
This is probably a little simplistic, but basically what you're saying is that any

[00:06:02] Speaker 04:
unexpired patent language in the old 135 only applies, putting aside those exceptions, what I think aren't relevant here, to the old patent system.

[00:06:13] Speaker 04:
And it can't apply to anything under the new patent system.

[00:06:17] Speaker 04:
That's correct.

[00:06:17] Speaker 04:
It's really just two different worlds.

[00:06:19] Speaker 04:
When you're in the new world, so that language, even though you could ostensibly read it very broadly, it's read very broadly in the context of the old world and has no bearing whatsoever in the new world.

[00:06:32] Speaker 03:
Exactly, Your Honor, because Congress did not say that you're going to apply in any circumstances 135 or 102G to these already issued peer AI patents.

[00:06:44] Speaker 03:
In effect, what's happening here is you're

[00:06:47] Speaker 03:
is what the board is, is it interpreted a zombie law with respect to the pure AIA patents to try to draw them in to an interference.

[00:06:56] Speaker 03:
And I think if we just take a step back, it doesn't make any sense what happened here.

[00:07:00] Speaker 03:
The director doesn't dispute at all that we basically satisfied all the requirements

[00:07:07] Speaker 03:
in order to get an issued patent under the AIA.

[00:07:10] Speaker 03:
We met the requirements of the current 102A.

[00:07:13] Speaker 03:
We didn't fall under any of the exceptions.

[00:07:16] Speaker 03:
And so we got a valid property right here.

[00:07:18] Speaker 03:
And yet now, we had our property right taken away from us based upon a statute that was never required for us to satisfy under patentability.

[00:07:28] Speaker 03:
That simply just makes no sense.

[00:07:29] Speaker 03:
And it goes against what Congress wanted to do when it enacted the AIA.

[00:07:33] Speaker 06:
Can you give me your rationale for why Congress wrote Section 3N2?

[00:07:41] Speaker 06:
What was it trying to accomplish through 3N2?

[00:07:46] Speaker 03:
I think that what it wanted to happen here is that one of these mixed applications

[00:07:51] Speaker 06:
the ones that have some pre a claims and to be examined under the new a i a one or two yes he's subject to interference right because they would they think about this particular category of a i a patents what ought to be called out expressly to be subject to the possible interference what i think that that's those i mean that is the transition right here that you know the congress was trying to address it was basically getting the straddle patents that basically

[00:08:21] Speaker 03:
were transitioning from the old to new rules.

[00:08:23] Speaker 03:
And so it wanted them to meet both requirements.

[00:08:25] Speaker 02:
What did the ledge history say about it?

[00:08:28] Speaker 03:
The ledge history would say, what did it say?

[00:08:31] Speaker 03:
I mean, I think that the PTO's brief had an example on page 8.

[00:08:40] Speaker 06:
That was like the 20 page floor statement, right?

[00:08:43] Speaker 03:
Right.

[00:08:44] Speaker 03:
And that's basically what shows

[00:08:46] Speaker 03:
the example of why they wanted 3N2 to actually be there.

[00:08:50] Speaker 03:
So they would have the possibility of you have a pre-AIA claim that was filed after the AIA one, and you would have 3N2 to make sure that they could either start an interference or they could be drawn into an interference.

[00:09:09] Speaker 03:
Now, I think importantly, if you take what is here in this chart and we give it the meaning

[00:09:15] Speaker 03:
that the board did or the director or Rockefeller did, it really was unnecessary for Congress to do this because they always could have been drawn into an interference even without 3N2.

[00:09:28] Speaker 03:
And so what the provision was making clear was that that wasn't the case.

[00:09:35] Speaker 03:
That's not what was going to happen, but for 3N2 to make it so that they could be an application to either start the interference

[00:09:43] Speaker 03:
or to be drawn into the interference.

[00:09:46] Speaker 03:
And that's what happened in the session.

[00:09:49] Speaker 03:
I'm getting to the merits here.

[00:09:50] Speaker 06:
Do you agree that Rockefeller's published application is prior art against all of Snipers patents here?

[00:09:59] Speaker 03:
I think that it would.

[00:10:00] Speaker 06:
It predates.

[00:10:00] Speaker 03:
It predates.

[00:10:01] Speaker 03:
It does.

[00:10:01] Speaker 06:
The early effective violent date.

[00:10:03] Speaker 03:
And certainly, I think that this is another

[00:10:06] Speaker 03:
thing that Congress wanted to happen here.

[00:10:08] Speaker 03:
By moving to the first-to-file system, they wanted under 102A Rockefeller's application to potentially be an anticipatory reference.

[00:10:18] Speaker 03:
But you would have to decide that as a question of fact on a claim-by-claim basis.

[00:10:23] Speaker 06:
And our point is that... Likewise, if the Rockefeller application never gets issued as a patent,

[00:10:30] Speaker 06:
then that patent would be prior art against all of Snipers patents under 102A2.

[00:10:34] Speaker 03:
Yes, they would have 102A.

[00:10:39] Speaker 03:
They would have any challenge based upon what is basically disclosed, but our point is that their disclosure, their application doesn't actually anticipate or render obvious our claims.

[00:10:51] Speaker 03:
And that was something, of course, that was never decided.

[00:10:54] Speaker 03:
Rockefeller asked in this interference to actually file a 102A motion, and the board didn't authorize it.

[00:11:03] Speaker 03:
It only decided this based upon invention priority, which the court knows means that you can eliminate all the patents in one sort of broad action.

[00:11:11] Speaker 03:
But there is no presumption to knock out all the claims in all the patents when you're dealing with something like anticipation or obviousness.

[00:11:19] Speaker 03:
So the mere fact that Rockefeller says, well, they're the first to file,

[00:11:23] Speaker 03:
Certainly, they're the first to file this application, but that doesn't actually mean they're the first ones to invent and actually the first ones to file what is actually claimed right now.

[00:11:33] Speaker 03:
And that's what we dispute.

[00:11:34] Speaker 03:
That's what has never been decided by this court.

[00:11:36] Speaker 03:
And that's what Congress wanted to happen.

[00:11:38] Speaker 03:
It wanted there to be PGRs.

[00:11:40] Speaker 03:
It wanted there to be IPRs.

[00:11:41] Speaker 03:
It didn't want there to be interferences anymore.

[00:11:44] Speaker 03:
In fact, Congress had in, I think it was Section 6F of the AIA, it wanted the director to go through pending interferences and potentially get rid of them, dismiss them without prejudice to bringing a PGR.

[00:12:01] Speaker 03:
So it doesn't make any sense today to have an interference like this.

[00:12:07] Speaker 06:
My point is, it seems like whether

[00:12:11] Speaker 06:
we permit this interference or not, you're still going to have to meet your maker in a sense.

[00:12:20] Speaker 06:
No, no, we disagree with that.

[00:12:22] Speaker 06:
There will be a challenge to these patents, perhaps under 102 or 103, in light of Rockefeller's published application at a minimum and perhaps ultimately an issued patent.

[00:12:35] Speaker 03:
But that's always the possibility whenever two people

[00:12:39] Speaker 03:
in that subject matter that may be somewhat similar.

[00:12:42] Speaker 03:
There always is the possibility that you could have a 102 and 103 challenge, but that doesn't mean that you then say, we're going to just not put them to their burden of proof.

[00:12:52] Speaker 03:
We're not going to make them actually prove on the facts that their application anticipates each and every one of our claims.

[00:13:01] Speaker 06:
Can I ask you about the motion that happened at the board that got denied?

[00:13:06] Speaker 06:
It got a little confusing for me to track exactly how things were.

[00:13:13] Speaker 06:
And the one question I have is, ultimately, the board said, I'm dismissing your motion sniper because you never established that Rockefeller's application isn't a 3N2 application.

[00:13:28] Speaker 06:
And I'm wondering,

[00:13:30] Speaker 06:
Was that brought up at all in the briefing from either party, or was that the board sua sponte, just identifying that in its dismissal decision?

[00:13:41] Speaker 03:
No, that was a sua sponte sort of action by the board.

[00:13:48] Speaker 03:
The board authorized us to file Motion 4 as a threshold issue when we said that if you don't accord the benefit to the count, they're no longer a pre-AA application, and then you should terminate the interference.

[00:13:59] Speaker 03:
Rockefeller responded on the merits on that, and then the board dismissed the motion as moot.

[00:14:06] Speaker 03:
Now, I would just want to say that I think that this probably, Motion 4 probably just shows in part why it doesn't make any sense to have interferences with a pure AI claim here.

[00:14:17] Speaker 03:
The only accorded benefit that we saw, the only sort of

[00:14:22] Speaker 03:
evidence that we saw in the declaration that they had a pre-AIA date that would make them mixed was the accorded benefit that the board gave them and that's what we attacked and we showed that they weren't entitled to the accorded benefit of the provisional application that was filed before the pre-AIA and that corresponded to all their claims.

[00:14:45] Speaker 03:
uh... now the the board says and and and the other side says that we need to show that any claim in any application you did not have an effective date before uh... the pre-a but the problem with that is that you know in actual terms in power away since

[00:15:01] Speaker 03:
this court has consistently said that you just say the default rule for any claim is the date of the application that it's contained in.

[00:15:10] Speaker 03:
And it's up to the patentee or applicant to actually show that they're entitled to an earlier date.

[00:15:15] Speaker 03:
And so we had, it's not our obligation to go through every claim by claim to say, no, they're actually mixed, particularly when the board, when it declared this interference, didn't identify any other claims that it said would give them

[00:15:29] Speaker 03:
a pre-AIA priority date.

[00:15:32] Speaker 06:
Mr. Matsui, thanks very much.

[00:15:34] Speaker 06:
We will reserve your wattle time.

[00:15:35] Speaker 06:
Thank you.

[00:15:38] Speaker 06:
We'd like to hear from the PTO first.

[00:15:41] Speaker 06:
And let's give them a total of 18 minutes.

[00:15:48] Speaker 06:
Ms.

[00:15:48] Speaker 06:
Craven, go ahead.

[00:15:49] Speaker 00:
Good morning, Your Honors.

[00:15:50] Speaker 00:
May it please the court?

[00:15:51] Speaker 00:
Snipers post-AIA

[00:15:54] Speaker 00:
patents are subject to an interference under the plain language of the AI's timing provision and the pre-AI law.

[00:16:00] Speaker 02:
I'm confused.

[00:16:01] Speaker 02:
The board says that if they don't have discretion to declare an interference, the sole alternative is the granting of two patents to the same invention.

[00:16:13] Speaker 02:
That seems to be your

[00:16:15] Speaker 00:
Essentially, the director has declared the interference between what is, I think, now interfering subject matter claimed by the... What about an ex parte re-examination or an inter-partis review?

[00:16:31] Speaker 00:
So the office itself can't initiate a PGR and IPR against Snipers patents.

[00:16:36] Speaker 00:
That's obviously a third party that brings it to the office.

[00:16:39] Speaker 00:
There are director initiated re-exams that are possible if there's a substantial new question of patentability.

[00:16:45] Speaker 00:
However, we would like to interpret the statutes to avoid issuing to interfering patents to different entities rather than using our tools to correct that once it has happened.

[00:16:58] Speaker 00:
And we think we can read the statute that allows this interference to proceed so that we don't issue interfering patents across the AI data line to these different parties.

[00:17:07] Speaker 06:
It wouldn't be the first time that the PTO granted interfering patents to two different inventors, though, right?

[00:17:15] Speaker 00:
I mean, this is maybe the first time where we know about it.

[00:17:17] Speaker 06:
It happened just in the prior appeal.

[00:17:19] Speaker 00:
Right.

[00:17:19] Speaker 00:
This may be the first time that I'm aware that we know that they're interfering subject matter, that no one is contesting that this is interfering

[00:17:27] Speaker 00:
subject matter and that then we would, under Sniper's construction of the statute, be forced to issue.

[00:17:33] Speaker 06:
So as I understand Sniper's argument today, they're saying we have to read the old section 135 in the context of what happened in the AIA.

[00:17:46] Speaker 06:
And when we look at the effective date provision under section 3N, we know that sniper's patents are all first to file patents.

[00:17:55] Speaker 06:
They aren't examined in the first to invent world.

[00:17:59] Speaker 06:
And then we know from 3N2 that Congress gave notice and specified a certain

[00:18:10] Speaker 06:
unusual category of AIA patents that will be subject and on the hook to a possible interference.

[00:18:17] Speaker 06:
And I guess the question is, why isn't that some indicia that Congress understood, okay, we might have to think about the possibility of an interference between an AIA style patent and maybe a pre-AIA patent.

[00:18:33] Speaker 06:
And here's what we've come up with.

[00:18:37] Speaker 06:
This particular subclass that we are identifying in Section 3N2 is where those AIA style patents will be subject to an interference, can be a party to an interference.

[00:18:50] Speaker 06:
And if that's the right takeaway, then why shouldn't old Section 135 be read to say, old 135 is applying where

[00:19:03] Speaker 06:
the old pre-AIA matters, which is for pre-AIA patents and pre-AIA applications, except for this one category of AIA-style patents that we have identified in Section 3 and 2.

[00:19:17] Speaker 06:
And therefore, we the court can read everything nice and harmoniously.

[00:19:22] Speaker 06:
What's wrong with that story?

[00:19:23] Speaker 02:
And why shouldn't we read it in light of the doctrinal

[00:19:28] Speaker 02:
interpretation, which says that when the legislature has the specific, it excludes the general.

[00:19:35] Speaker 00:
Right.

[00:19:35] Speaker 00:
So the purpose of N2, which is indicated by the floor debate, is that it was to prevent interfering patents from issuing across the AIA dateline.

[00:19:46] Speaker 00:
So that was the purpose.

[00:19:47] Speaker 00:
And you can definitely read the statements by Senator Kyle, which I'll emphasize are just the statements of a single senator that

[00:19:55] Speaker 00:
as Sniper does, that that means you had to have N2 in order to bring this second category of applications and patents into interferences.

[00:20:04] Speaker 00:
But that would then result in scenarios.

[00:20:06] Speaker 00:
That's under-inclusive of scenarios where interfering patents could issue across the AIA dateline.

[00:20:12] Speaker 00:
And N2 can serve a purpose without it being just this single category of applications.

[00:20:20] Speaker 06:
I'm trying to understand the agency's concern about

[00:20:25] Speaker 06:
possibly granting a legitimate pre-AIA patent under old pre-AIA law and then a legitimate AIA patent under AIA law on the same thing to different inventors, how often can that really happen when if they really are legitimately claiming the same thing?

[00:20:47] Speaker 06:
The pre-AIA patent is always going to have the earlier effective filing date.

[00:20:53] Speaker 06:
And so it's always going to predate and serve as prior art and knock out any subsequent AIA patent that issues under AIA law.

[00:21:04] Speaker 00:
Well, the example we put in our brief is you could have a pre-declosure.

[00:21:08] Speaker 06:
That's a highly imaginative example, and I give you credit for that.

[00:21:12] Speaker 06:
It's based on six different contingencies within a very tightly narrow timeframe.

[00:21:18] Speaker 00:
That's right, Your Honor.

[00:21:19] Speaker 06:
I'm sure you haven't identified an example of where this happened.

[00:21:21] Speaker 00:
I do.

[00:21:21] Speaker 00:
I am not aware of an example of where this has actually happened.

[00:21:25] Speaker 06:
And I would hate to think that that slender read would be the basis for throwing every AIA patent into the mix of potentially being dragged through the back door into an interference arena.

[00:21:38] Speaker 00:
Well, there is the broader part that the Patent Act, both pre-AIA and AIA, does seek to prevent having interfering patents issuing to different

[00:21:47] Speaker 00:
entities, the goal of the prior art provisions is that you would identify who, in fact, is the first to invent.

[00:21:54] Speaker 04:
But Congress was pretty clear in the AIA, right, that it hated interferences and wanted to get rid of them.

[00:22:00] Speaker 00:
That's correct.

[00:22:01] Speaker 04:
Right.

[00:22:02] Speaker 04:
So they wanted nothing going forward after these effective dates, except that the small exceptions be subject on the space to have an interference regime.

[00:22:14] Speaker 00:
Yes, you can read it that way.

[00:22:16] Speaker 00:
That's certainly true.

[00:22:19] Speaker 04:
But the logic of your argument is that even though Congress has expressed this purpose very, very clearly, I think, is that based on language from the old statute that they're repealing all new AIA patents, nonetheless, for a fairly lengthy period, because there are all these unexpired pre-AIA patents, are going to be subject to interferences, right?

[00:22:43] Speaker 04:
Don't you think if Congress actually meant that, they would have written that?

[00:22:49] Speaker 00:
Well, they could have gotten rid of interferences altogether as a dead letter for all applications patents, but they didn't.

[00:22:56] Speaker 00:
They left the pre-AIA law for applications like Rockefeller.

[00:23:00] Speaker 02:
But it seems like they did a specific carve out.

[00:23:03] Speaker 00:
Right.

[00:23:03] Speaker 00:
There is then these N2 applications, which serves the purpose and prevents someone who has ever had an AIA priority date

[00:23:12] Speaker 00:
from playing games across the dateline, as you can imagine the situation here.

[00:23:16] Speaker 00:
If you didn't have N2, under N1 Rockefeller, all they have to do is present a claim to the office that's had an AIA effective date and say, Hey, we are now an AIA patent under N1.

[00:23:29] Speaker 00:
And we don't have, you know, we now are the first to file and we just win.

[00:23:34] Speaker 06:
You could also imagine a scenario where snipers filed a... So let's give credit to Congress for figuring that out and then specifying that in 3N2 to preserve the possibility of, you know, or to understand the possibility of that very gamesmanship and then addressing it and taking care of it and nipping it in the bud.

[00:23:54] Speaker 06:
But that, what we're dealing with here is very, very qualitatively different where

[00:24:00] Speaker 06:
people have been given notice, throw away your lab notebooks, because all that matters is your earliest effective filing date.

[00:24:06] Speaker 06:
Now you want to tell all of them, oh, but wait a second, just kidding.

[00:24:11] Speaker 06:
Actually, you do need to keep all those lab notebooks.

[00:24:15] Speaker 06:
You better keep everything.

[00:24:16] Speaker 06:
You better keep all your files.

[00:24:18] Speaker 06:
You better not erase one darn thing.

[00:24:21] Speaker 06:
So I'm going to take a wild guess that the BTO hasn't ever written a notice like that to all the AIA applicants and patent owners that

[00:24:30] Speaker 06:
They still need to keep doing this because there's this thing called old section 135 that happens to have embedded in it this statement about any unexpired patent.

[00:24:40] Speaker 06:
And we read that to cover your AIA patents.

[00:24:44] Speaker 06:
I'm going to guess there isn't a notice like that.

[00:24:46] Speaker 00:
No, there is not.

[00:24:47] Speaker 06:
So Sniper is probably reasonably said to be caught way off guard here in this circumstance.

[00:24:56] Speaker 00:
In terms of the MPEP or other notice, there wasn't.

[00:25:00] Speaker 00:
There's obviously the proposed provision of the interference 135B that a year after a patent is issued, no interfering claims can be presented.

[00:25:09] Speaker 00:
So it's not like AIA patents are forever going to be at risk of the interference because of the proposed provisions.

[00:25:18] Speaker 04:
year after a patent issues no it seems to me like the director is rewriting the statute in a way wishes Congress would have written it but it's not what Congress said.

[00:25:28] Speaker 04:
They flipped from one system to the other and maybe they didn't think about this problem you're worried about but maybe they did and they didn't care.

[00:25:38] Speaker 00:
I mean, I think they were worried about it, because N2 called interfering patents.

[00:25:42] Speaker 04:
Well, that doesn't get you very far, right?

[00:25:43] Speaker 04:
Because if you say they're worried about it, and so they enacted N2, then we're bound by what N2 says.

[00:25:50] Speaker 04:
And that doesn't apply here, right?

[00:25:52] Speaker 00:
Well, yeah.

[00:25:53] Speaker 00:
We don't think it does, because Rockefeller is being examined as a pre-AI application.

[00:25:58] Speaker 06:
But 3N2 doesn't qualify sniper's patents.

[00:26:01] Speaker 06:
That's true.

[00:26:02] Speaker 06:
That's true.

[00:26:02] Speaker 06:
So that's what we're trying to figure out.

[00:26:04] Speaker 06:
I mean, it takes two to tango here.

[00:26:06] Speaker 06:
Just because Rockefeller's application can be a party to a 135 interference doesn't necessarily mean that Snipers' AIA patents likewise can be a party to a section 135 interference.

[00:26:19] Speaker 00:
So the office is reading the pre-AI law in light of the fact that it's examining Rockefeller's application.

[00:26:26] Speaker 00:
And 135A says, any unexpired patent.

[00:26:30] Speaker 00:
Congress could have amended it to say, any unexpired patent.

[00:26:34] Speaker 00:
That is also subject to 102G, or that falls under the pre-A law.

[00:26:37] Speaker 00:
But they didn't do that.

[00:26:39] Speaker 00:
So what the office is doing is we- There's clear congressional intent.

[00:26:44] Speaker 02:
And it's evidenced by the general ledge history, which I thought your friend on the other side would say, that they

[00:26:55] Speaker 02:
clearly wanted to eliminate interferences wherever they could.

[00:26:59] Speaker 00:
That is true.

[00:27:00] Speaker 00:
And they will be eliminated when there's no applications or patents that have pre-AIA.

[00:27:05] Speaker 04:
How many years is that?

[00:27:06] Speaker 04:
I mean, that's another 15 years, isn't it?

[00:27:08] Speaker 00:
I think it's March 16, 19, I mean, 2034.

[00:27:14] Speaker 00:
So it is a long time.

[00:27:15] Speaker 06:
We'll be long gone by then.

[00:27:18] Speaker 06:
Not your honor.

[00:27:20] Speaker 00:
But so Congress could have done.

[00:27:23] Speaker 04:
But I mean, that's just extraordinary.

[00:27:25] Speaker 04:
Given this strongly expressed disapproval of the interference system, that Congress, by not specifically saying that we're going to amend this language in this statute that we only thought applied to the old system anyway, that they thought they needed to do that to get rid of interferences for the new stuff.

[00:27:49] Speaker 04:
I can't imagine that they would have thought, well, we're getting rid of interferences, but not really for the next 20-some years.

[00:27:58] Speaker 00:
I mean, that's fair.

[00:27:59] Speaker 00:
We are reading the plain language, and we choose to be inclusive.

[00:28:01] Speaker 04:
I know, but textualism has its limits.

[00:28:03] Speaker 04:
That's fair.

[00:28:05] Speaker 04:
And absurdity is one of those limits.

[00:28:07] Speaker 04:
And it seems pretty absurd to me to say, to read Congress's change from

[00:28:14] Speaker 04:
first to invent, first to file, and get rid of interferences to save, but not really until all these ones have worked through their life.

[00:28:24] Speaker 00:
That's true.

[00:28:24] Speaker 00:
That is a fair way to read it.

[00:28:26] Speaker 00:
The office is reading it from the fact that we're examining pre-AI applications.

[00:28:30] Speaker 00:
And we now know.

[00:28:31] Speaker 04:
And you can examine them under the pre-AIA system for all pre-AIA patents.

[00:28:38] Speaker 00:
Right.

[00:28:38] Speaker 00:
We were reading it so it would not be under-inclusive of interfering patents that could issue over the dateline.

[00:28:45] Speaker 06:
And I guess so for Snipers patents.

[00:28:48] Speaker 06:
they were told you're going to be examined under the new AIA 102 because you are the first inventor to file kind of application.

[00:28:57] Speaker 00:
Correct.

[00:28:58] Speaker 06:
But now by being forced to experience an interference, now the old 102 is being applied, the first to invent laws.

[00:29:08] Speaker 06:
And so it seems to me it's created this mongrel thing where you're trying to

[00:29:16] Speaker 06:
do two different regimes to the same patent.

[00:29:20] Speaker 06:
You're first doing the first-to-file scheme, and then now you're saying, but we're also going to make you go through the first-to-invent hopscotch steps.

[00:29:32] Speaker 06:
There's something peculiar and almost unnatural about that, don't you think?

[00:29:37] Speaker 00:
But I definitely see Snipers' point and your point, Your Honor.

[00:29:42] Speaker 00:
It is.

[00:29:42] Speaker 00:
We're just reading.

[00:29:43] Speaker 06:
Will the agency be outraged if we

[00:29:45] Speaker 06:
They're not allowed to have their interferences for any sorts of situations.

[00:29:50] Speaker 00:
The office is reading the statute.

[00:29:53] Speaker 04:
Rockefeller really invented this.

[00:29:56] Speaker 04:
They clearly have an earlier priority date.

[00:29:59] Speaker 04:
So why would you give a patent to Sniper at all?

[00:30:02] Speaker 00:
We're obviously here now when Sniper's patents have already issued.

[00:30:07] Speaker 04:
But if that was a mistake, there are ways to challenge that mistake under the AIA.

[00:30:12] Speaker 00:
Well, there's not ways for the office to challenge it.

[00:30:14] Speaker 04:
Well, maybe Congress didn't want the office to challenge that.

[00:30:18] Speaker 04:
If they did, they could have given you the opportunity to do exactly what you're saying.

[00:30:22] Speaker 00:
That's fair.

[00:30:23] Speaker 00:
We have read it so that we can do error correction through this interference if that truly was an error.

[00:30:31] Speaker 00:
and not issue interfering patents across the dateline.

[00:30:34] Speaker 00:
If we cannot read the statute that way, Rockefeller's otherwise allowable claims can issue, and there then, it's the parties that can resolve it.

[00:30:45] Speaker 06:
In this particular instance, it may well be that the patent examiner for Snipers patents just overlooked the published application of Rockefeller's.

[00:30:55] Speaker 04:
I do not know what the prosecution history... Or maybe that the Rockefeller application didn't actually invent what they say they invented now.

[00:31:02] Speaker 00:
Right, you're right.

[00:31:03] Speaker 04:
We all didn't determine that.

[00:31:05] Speaker 00:
That's true.

[00:31:05] Speaker 00:
We could move to, I mean, motion four.

[00:31:07] Speaker 00:
If you decide for us on motion one, there's still motion four.

[00:31:12] Speaker 00:
In that case, the

[00:31:14] Speaker 00:
The board raised the issue of whether Rockefeller was still an N2 application and that's still subject to interferences because... And that was something the board, Suez-Bonte, raised as a basis for kicking out the motion, right?

[00:31:28] Speaker 06:
No party raised that possible angle.

[00:31:31] Speaker 00:
That's true.

[00:31:32] Speaker 06:
It's almost like a new ground of rejecting the motion raised for the very first time in the decision.

[00:31:39] Speaker 00:
Well, it was a response to what Snipers relief was requested.

[00:31:42] Speaker 00:
Snipers was asking that the interference be terminated.

[00:31:46] Speaker 00:
And in order to give that relief, it's got to be that Rockefeller is not just not a pre-AIA application, but also not a

[00:31:55] Speaker 00:
and two application also subject to 102 G and interference law.

[00:31:59] Speaker 00:
And they didn't make that showing.

[00:32:01] Speaker 00:
And to the extent they're arguing now that the initial showing was insufficient by Rockefeller, the board followed the regulations which accord the benefit date.

[00:32:15] Speaker 00:
They make a determination.

[00:32:16] Speaker 00:
that they have accorded a benefit date based on a proper constructive reduction to practice back to the provisional.

[00:32:22] Speaker 00:
And it was then Snipers' burden to challenge that.

[00:32:25] Speaker 06:
We should let your friend also get some time.

[00:32:27] Speaker 00:
All right.

[00:32:28] Speaker 00:
Thank you, Your Honors.

[00:32:28] Speaker 06:
Thank you.

[00:32:29] Speaker 06:
We'll give the appellee five minutes here.

[00:32:34] Speaker 06:
Go ahead.

[00:32:36] Speaker 01:
Thank you, Your Honors.

[00:32:37] Speaker 01:
If it please the Court, I'd like to start with congressional intent.

[00:32:44] Speaker 01:
Congress certainly wanted to eliminate future interferences, but at the same time they wanted to preserve interferences for pre-AIA patents or applications to allow them to get into interference.

[00:32:57] Speaker 01:
That seems to be very clear, but the fact that they never touched the N2 never discusses

[00:33:04] Speaker 06:
What's wrong with understanding 3N2 as Congress identifying and expressing and giving notice to the world that there is just one subtype of AIA patents that are going to be possibly subject to interferences, and it's this particular subtype that we are identifying right here in 3N2?

[00:33:24] Speaker 06:
Because obviously under 3N1, for AIA patents, the default is you're just looking at AIA

[00:33:33] Speaker 01:
Well, I think there's two things.

[00:33:34] Speaker 01:
One, N2 does create as opposed to take away.

[00:33:40] Speaker 01:
It allows the application of 135.

[00:33:42] Speaker 01:
It doesn't say anything about taking anything away anywhere in N1 or N2.

[00:33:50] Speaker 02:
If you say create, you could also say limit.

[00:33:55] Speaker 01:
I think that at best 3N and 3N2 are confusing.

[00:34:04] Speaker 01:
I think that was made very clear by this court in Biogen that referred to it as being not exactly a model of clarity.

[00:34:15] Speaker 01:
So I think it's not a clear statute at all.

[00:34:19] Speaker 01:
There are things missing.

[00:34:20] Speaker 01:
It does not refer at all to pre-AIA.

[00:34:22] Speaker 01:
It doesn't seem to take away anything from pre-AIA patents and applications whatsoever.

[00:34:29] Speaker 01:
At the same time, it seems to add the ability for these transition

[00:34:33] Speaker 01:
patents, the ability to get into an interference.

[00:34:37] Speaker 01:
So it seems to be... When they're mixed?

[00:34:40] Speaker 01:
The mixed, yes, when they're mixed.

[00:34:42] Speaker 06:
So why does 3N2 even exist under your understanding of the AIA and its interrelationship with old Section 135?

[00:34:51] Speaker 06:
Because you could strip out 3N2 and you could still subject all these so-called mixed AIA patents and patent applications to old interference law under your theory.

[00:35:03] Speaker 01:
Yes.

[00:35:04] Speaker 01:
And, well, in fact, 3N does not discuss the pre-AIAs at all.

[00:35:09] Speaker 01:
I think that the Congress was worried about having two patents issue for the same invention.

[00:35:19] Speaker 01:
And I think that was their way, something that they thought about.

[00:35:21] Speaker 01:
They did not, I don't think, expect that the entity that was not the first to file, not the first to invent, would be the first to patent.

[00:35:33] Speaker 01:
I don't think that that was something that they considered when they wrote N2.

[00:35:37] Speaker 01:
Had they, I think there would have been some more explanation.

[00:35:39] Speaker 01:
I think there are a lot of things that they didn't anticipate in N2.

[00:35:43] Speaker 01:
And I think that leads to a lot of the lack of clarity in N2.

[00:35:46] Speaker 04:
So aren't you just asking us to rewrite the statute to address this situation?

[00:35:51] Speaker 04:
I mean, we can't do that.

[00:35:52] Speaker 04:
No, I'm not.

[00:35:53] Speaker 04:
Congress anticipated one issue, and they put it in there.

[00:35:57] Speaker 04:
And any other potential problems,

[00:36:01] Speaker 04:
You know, they're out there and they gave you alternative ways to deal with competing pre and post-AIA patents that may conflict, but an interference isn't one of them.

[00:36:12] Speaker 01:
I think by not doing anything to pre-AIA 135 whatsoever.

[00:36:18] Speaker 04:
I don't understand why you keep saying they didn't do anything to pre-AIA patents.

[00:36:23] Speaker 04:
They completely said, this scheme no longer exists for post-AIA patents.

[00:36:29] Speaker 04:
It's gone.

[00:36:30] Speaker 04:
It's replaced.

[00:36:31] Speaker 04:
So yeah, the scheme exists for all pre-AIA patents.

[00:36:35] Speaker 04:
And why wouldn't we read that language that you and the director want

[00:36:41] Speaker 04:
look at as any unexpired patents as confined to that pre-AIA patent world.

[00:36:46] Speaker 04:
Because when they wanted it to expand beyond that, they specifically put in that three, whatever that in exception we're talking about.

[00:36:55] Speaker 01:
Well, 3N2 doesn't further clarify that those mixed patents can't get into an interference with pure AIA patents either.

[00:37:05] Speaker 01:
They could have put it there.

[00:37:07] Speaker 01:
They could have put it into

[00:37:09] Speaker 01:
the pre-AIE that they were getting rid of.

[00:37:11] Speaker 01:
They didn't do any of that.

[00:37:13] Speaker 01:
And I think if you look at pre-AIE 135, it is a very clear statute.

[00:37:18] Speaker 01:
It says any, and it says very clearly, shall determine priority.

[00:37:26] Speaker 01:
So these are terms that are very clear.

[00:37:29] Speaker 01:
And I think that the court should follow the clear statute as opposed to taking it in two.

[00:37:36] Speaker 04:
Well, I don't think we need to worry about the N2 statute.

[00:37:39] Speaker 04:
I think we look at the AIA, and it's for the post-AIA patents, and it says no interferences.

[00:37:47] Speaker 04:
Why isn't that clear?

[00:37:50] Speaker 01:
Well, I don't think it anywhere addresses this particular point.

[00:37:55] Speaker 04:
it eliminates the entire interference procedure for any patent file after the affected dates.

[00:38:00] Speaker 01:
It eliminates the ability for the post-AIA to get into it.

[00:38:05] Speaker 04:
Can you address my, I guess more of a comment, but a question to the director.

[00:38:12] Speaker 04:
If Congress actually meant for this interference proceeding to go on for another 20 years after the enactment of the AIA, wouldn't they have said that?

[00:38:22] Speaker 01:
No, I don't think so.

[00:38:25] Speaker 01:
I think that allowing interferences to continue for pre-AIA.

[00:38:30] Speaker 06:
And necessarily pulling in AIA.

[00:38:33] Speaker 01:
And pulling them in doesn't in any way go against that.

[00:38:36] Speaker 01:
I mean they left pre-AIA

[00:38:39] Speaker 01:
alone completely.

[00:38:40] Speaker 01:
They didn't touch that regimen at all.

[00:38:42] Speaker 04:
I'm pretty sure that if you asked most of the members of Congress that were interested in this, they would be shocked by your argument.

[00:38:48] Speaker 01:
Well, I don't think so because I think what they would be thinking of is that these patents would never have issued.

[00:38:54] Speaker 01:
So they didn't contemplate the possibility.

[00:38:58] Speaker 04:
Right, which is why you're asking us and the director is asking us to rewrite a statute

[00:39:03] Speaker 04:
to deal with a possibility they didn't contemplate, rather than just apply their intent.

[00:39:09] Speaker 04:
Sometimes Congress doesn't address every single thing.

[00:39:12] Speaker 04:
If you think, or the director thinks, this is going to be a big problem going forward, you can go to Congress and say, oh, here's this other thing you should have thought about, about whether we can pull in post-AIA patents.

[00:39:23] Speaker 04:
But when they said, we're switching from one regime to the next with only this limited exception, why don't we take them at their word?

[00:39:31] Speaker 01:
Well, I think we are taking them to their word.

[00:39:33] Speaker 01:
Because I think they left that issue open completely.

[00:39:37] Speaker 02:
The word was that they were specifically driven by interferences.

[00:39:42] Speaker 06:
What about IPRs?

[00:39:44] Speaker 06:
Could you request an IPR to cancel all of Sniper's patent claims?

[00:39:51] Speaker 06:
Based on the strength of your published patent application?

[00:39:55] Speaker 01:
I don't think that the burden is on us.

[00:39:58] Speaker 01:
tutututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututututut

[00:40:20] Speaker 01:
Yes, but what they do answer the question of is whether or not Rockefeller could be invalidated under 102G.

[00:40:29] Speaker 01:
The answer to that question from the interference and only from the interference is no.

[00:40:35] Speaker 01:
Why?

[00:40:35] Speaker 01:
Because within the context of the interference, there's a senior party, there's a junior party.

[00:40:40] Speaker 01:
Rockefeller is the senior party.

[00:40:43] Speaker 01:
The presumption is Rockefeller wins unless the junior party does something about that and changes that.

[00:40:50] Speaker 01:
And nothing was done during the interference to change that particular order of the parties.

[00:40:56] Speaker 01:
Motion four doesn't change that either.

[00:40:59] Speaker 01:
And I think that's something that the board saw.

[00:41:01] Speaker 01:
It doesn't change it.

[00:41:03] Speaker 01:
It then allows Rockefeller's patent to issue, because Rockefeller's application is still subject to 102-G.

[00:41:10] Speaker 06:
Is Rockefeller's application a 3N2 application?

[00:41:14] Speaker 01:
I don't think that that's, there's- I just need an answer.

[00:41:17] Speaker 06:
Is it a 3N2 application?

[00:41:19] Speaker 06:
Has it ever contained

[00:41:21] Speaker 06:
a claim that effective filing date is post effective date of AIA?

[00:41:26] Speaker 01:
I don't have an answer on that question as to whether it's a pure AIA or it's a mixed.

[00:41:33] Speaker 01:
It's never been argued that it's either of them.

[00:41:37] Speaker 06:
But you don't know.

[00:41:38] Speaker 06:
You don't know.

[00:41:38] Speaker 06:
You're not familiar enough.

[00:41:40] Speaker 06:
I can't go through them all.

[00:41:42] Speaker 06:
OK.

[00:41:42] Speaker 06:
That's fine.

[00:41:43] Speaker 06:
Thanks very much.

[00:41:44] Speaker 06:
We have your argument.

[00:41:45] Speaker 06:
We'll hear from the other side.

[00:41:49] Speaker 06:
Thank you.

[00:41:49] Speaker 06:
Five minutes.

[00:41:51] Speaker 03:
I just have a few brief points, Your Honors.

[00:41:54] Speaker 03:
First, I think that our position is the textualist position here.

[00:41:57] Speaker 03:
When you look at 3 and 2, it's saying that the provisions of 135 shall apply to those mixed applications.

[00:42:04] Speaker 03:
And with respect to 3 and 1, it basically, the AIA applies to pure AIA claims, and it erases 135 in its entirety.

[00:42:13] Speaker 03:
So the textualist reading is actually our reading in this situation.

[00:42:17] Speaker 03:
And that's consistent with the public policy that Congress wanted to enact.

[00:42:21] Speaker 03:
when it basically called interferences burdensome and costly.

[00:42:25] Speaker 03:
And in fact, in its not legislative history, but in its express statutory statement, it wanted greater certainty for inventors.

[00:42:33] Speaker 03:
But there's not going to be any certainty under the board and the director's rule, because you're going to have to go at least 10 more years in which you can be drawn into an interference.

[00:42:42] Speaker 03:
And I think it's not hypothetical that the court could see these interferences again.

[00:42:47] Speaker 03:
Because the first time that Rockefeller ever disclosed the inventions was when it copied our claims.

[00:42:53] Speaker 03:
And so that's the first time that you ever saw them show the invention.

[00:42:57] Speaker 03:
And that was well after any of these filing dates.

[00:43:01] Speaker 03:
And the last point is that there is no real repose with respect to interferences.

[00:43:06] Speaker 03:
There still is section 291.

[00:43:08] Speaker 03:
And so I think that you're going to see, under the director's rule,

[00:43:12] Speaker 03:
these applications that become patents, then trying to bring in pure AIA patents into interferences in district court.

[00:43:22] Speaker 03:
Congress wanted to eliminate and move away from the first to invent system.

[00:43:27] Speaker 03:
It did so.

[00:43:28] Speaker 03:
It created very narrow exceptions in three and two.

[00:43:31] Speaker 03:
for these interfering patents.

[00:43:33] Speaker 03:
And that means that the old 135 applies to those interfering patents.

[00:43:37] Speaker 03:
It doesn't apply to peer AIA claims.

[00:43:40] Speaker 03:
And I think Congress would be very surprised if it thought that interferences were going to continue until 2034 or whenever.

[00:43:48] Speaker 03:
If there are no further questions, we would ask the court reverse.

[00:43:52] Speaker 03:
OK.

[00:43:52] Speaker 03:
Thank you very much.

[00:43:53] Speaker 06:
The case is submitted, and that concludes today's oral audience.