[00:00:02] Speaker 03:
Ananta Pharmaceuticals v. Pfizer, 2025-14-27. Ms. Fiacco, when you are ready, you may proceed.

[00:00:17] Speaker 01:
Good morning, Your Honors. May it please the Court? The District Court erred in granting summary judgment that Ananta's 9-5-3 patent is not entitled to claim priority to its provisional application.

[00:00:27] Speaker 01:
Below, Kleiser seized on the fact that Ananta made a change to its provisional to address a typographical error, and then it convinced the district court to rely on the wrong line of cases. The decision at 820 makes clear that the district court, relying on Novo Industries, asked the wrong question.

[00:00:46] Speaker 03:
Putting aside language in different cases, but when one looks at the provisional, it's done with great care. All sorts of substituents are laid out there.

[00:01:00] Speaker 03:
Probably none of them have been reduced to practice. And anyone who did that drafting is expecting that these do constitute very careful, constructive reduction to practices. Then why don't we give the same kind of respect and credence to what was omitted?

[00:01:23] Speaker 03:
There's no indication that there was an error.

[00:01:27] Speaker 01:
Your Honor, there is an indication in the factual record that there is an error.

[00:01:32] Speaker 01:
that one of the inventors testified as such that the typographical error had been identified 10 days before the filing of the non-provisional. And Ananta's expert witness, a medicinal chemist formerly head at Merck, testified that the person of ordinary skill in the art reading the specification would have understood there to be an error.

[00:01:52] Speaker 01:
Moreover, Your Honor, And the ANTA's expert witness took on two questions. One, first, whether there was a typographical error.

[00:02:02] Speaker 03:
The expert witness is sort of subordinate. You say an inventor testified and said, I made a mistake?

[00:02:10] Speaker 01:
The inventor did not. The inventor said there was a typographical error identified in the specification 10 days before the filing of the non-provisional. There's no further evidence in the record about who made the actual error.

[00:02:24] Speaker 03:
Well... I mean, someone, well, you have inventors, and you have a draft person with the application who could have said, I meant this, but I just made a mistake. That's not on the record.

[00:02:39] Speaker 01:
No, it's not, Your Honor.

[00:02:41] Speaker 03:
And the reason for limiting a claim is to often avoid priority.

[00:02:49] Speaker 03:
And perhaps there was knowledge of what the Pfizer compound was, and this omission avoided the prior art, right?

[00:03:00] Speaker 01:
No, Your Honor, it did not avoid the prior art. A couple of things going on here. The Pfizer reference disclosure was not made until March of 2021.

[00:03:15] Speaker 01:
it involved a substituent that was a substituted C1 alkyl. And it was after that that Ananta made the change when it reviewed the application to prepare for the non-provisional filing. There's no evidence in the record other than the fact that because the inventor was testifying as a 30B6 witness solely for the purpose of was it a typographical error and what was the date on which the error was identified. Those are the only facts that we have in the record.

[00:03:46] Speaker 03:
Well, when it was supposedly identified isn't the point.

[00:03:50] Speaker 03:
The point is the dates of the filing of the respective applications, and there was an intervening act, namely a disclosure of Pfizer's compound at a conference, right?

[00:04:04] Speaker 01:
Yes, Your Honor. It's not unusual for there to be intervening art between the filing of the provisional and the non-provisional. The question here is whether the provisional itself conveyed possession of the C-1 substituted alkyls.

[00:04:18] Speaker 03:
The way one conveys possession is by disclosure.

[00:04:22] Speaker 01:
Well, the patents, the specification of the provisional does disclose in numerous places the identification of C-1 alkyl substituents. the C1 to C12 range is listed as the sixth identified substituent in the definition of substituted. And the expert in this case, Ananta's expert in this case, reads through that definition of substituted and identifies numerous instances where there are C1 alkyls identified.

[00:04:54] Speaker 00:
C1 alkyls, but the C1...

[00:04:59] Speaker 00:
dash C12 alkyl only shows up once, as I count them in the substituted. And after that, it's all C2 to C12, right? Eighteen times.

[00:05:10] Speaker 01:
That's correct, Your Honor. And our expert explained that. that based on the positioning of alkenyl and alkynyl... He makes this cut and paste. He believes it to be a cut and paste error.

[00:05:22] Speaker 04:
He used the word likely, though. In fact, his declaration says the word likely in three different locations. And that gave me some pause, because even if we were to go with a written description framework here, what you're really asking for is...

[00:05:43] Speaker 04:
for a court to conclude that text that is not in the spec, i.e. C1, is necessarily in the spec in light of everything that it says. In other words, it does say C2 to C12.

[00:05:59] Speaker 04:
You need a court to displace the C2 and replace it with a C1, and it has to necessarily be so.

[00:06:10] Speaker 04:
And then when Dr. Young says likely, likely, likely, that's not quite the same to me, to my eye, as it's necessarily so. There's no other way to read this other than to conclude C2 must be understood as C1. And I didn't quite see him say that. I understand he said the conclusion, which is I believe there was an obvious typographical error here. But then when you walk through his factual reasoning for why that is so, he says likely three different times.

[00:06:43] Speaker 04:
And that made me a little concerned that perhaps now we are getting a little bit into the realm of speculation and not so much as a factual objective matter. It must be that the C2 can be C1. It cannot be anything else.

[00:07:00] Speaker 01:
Your Honor, respectfully, I don't think that necessarily is the appropriate standard here.

[00:07:05] Speaker 04:
The question is whether the... What if it's an inherency doctrine for written description? Then wouldn't it be necessarily what is not there, not actually stated, must necessarily be inherently contained in the specification?

[00:07:23] Speaker 01:
Your Honor, the specification, though, does identify numerous places where the C1 alkyl substituents are identified, and I want to direct the court's attention to the definition of alkyl, which the district court just outright rejected.

[00:07:36] Speaker 04:
Could we get to the references to C1 in a few different places?

[00:07:41] Speaker 04:
Why...

[00:07:43] Speaker 04:
couldn't that be understood quite reasonably that the patent drafter and inventor very well knew how to say C1.

[00:07:52] Speaker 04:
In fact, it said C1 lots of times for other types of substituents.

[00:08:00] Speaker 04:
Then the fact that it said C2 to C12, I don't know, 15, 18 times, maybe is a clear signal that the times it said C2 over and over again, it meant to say C2.

[00:08:16] Speaker 01:
Your Honor, I think you're raising a question of fact under the written description doctrine. The priority question and the written description test as a whole are questions of fact for a fact finder. We are here today at Summary Judgment. And all inferences should be, reasonable inferences should be drawn in favor of the non-movement, Ananta. And Ananta's expert testimony should be viewed in the light most favorable to it. That did not happen in this case where the district court judge was applying a heightened standard of no vote. And it's highly unclear whether she even considered the questions from the perspective of the person of ordinary skill in the art or whether she was looking at it as a judged interpreting a legal instrument without the lens of the person of ordinary skill.

[00:08:59] Speaker 00:
Let me see if I understand your basic theory of the case, which is that I take it that you believe, and I think this is what you just said, that the filter through which we should view this case is written description because this is essentially a new matter case. So what we need to look at is, is there adequate written description of the ultimate claim in the non-provisional to be found in the provisional, i.e., does the provisional, and correct me if this is not your standard, have you met your burden of showing that the...

[00:09:43] Speaker 00:
the provisional reasonably conveys to the person of ordinary skill in the art that the inventor had possession at the time of the provisional. In a couple of sentences, that's your position, is it not?

[00:09:59] Speaker 01:
Correct, Your Honor, that is our position. And our burden is one of production. We've met that burden by providing the evidence of Dr. Young.

[00:10:09] Speaker 00:
Ultimately, the burden is on them to show, once you satisfy the court, that you have a reasonably conveyed possession that, They need to show that nonetheless... No reasonable jury could agree with us. Right, because of the... And then that raises the next question, which is, is this a jury question? A lot of the cases that have been decided in the new matter area, of course, come from the board and et cetera, and the jury issue doesn't come up.

[00:10:42] Speaker 00:
I don't remember any cases in which this precise issue has come up as a jury question. Maybe there are some, but I haven't seen them. I don't believe you cited any in your briefing.

[00:10:53] Speaker 01:
So there have certainly been cases where there are jury instructions where the jury is required to identify whether the priority claim in light of a change between the provisional and the non-provisional or a subsequent application. That question has gone to the jury. I believe one case that we have cited where there is a jury instructions is Cummins-Allison.

[00:11:17] Speaker 01:
That is the one that comes to mind. I'm I can think of at least one other case that includes a jury instruction.

[00:11:25] Speaker 00:
So your position right now, I take it then, is we think we have shown at least a jury question as to whether the provisional would reasonably have conveyed to a person of skill in the art that you possessed the subject matter that was ultimately in the non-provision.

[00:11:44] Speaker 01:
That's correct, Your Honor. C-1.

[00:11:45] Speaker 00:
The C-1 out-gill substituents.

[00:11:51] Speaker 00:
Now, as to the question, the thing that is troubling me here is that it seems to me that it's, I may be wrong about this, but my take on this, tentatively at least, is that it's pretty clear there was an error here. Because if nothing else, the reference to the C1, excuse me, to the C2 to C12 alkyl, in the definition of alkyl is followed immediately by the 1, 2, 12, which is presumably saying, if thought, what appeared in the C2 to C12 numerals.

[00:12:32] Speaker 00:
So someone made a mistake at that point, it seems to me. It's hard to square that with the idea that this was all intentional.

[00:12:41] Speaker 01:
So that mistake was part of the non-provisional application. I know, that's what I'm saying. And that mistake was not corrected. Yeah, yeah, I understand.

[00:12:49] Speaker 01:
And I think that there's a reasonable inference to be drawn, and Dr. Young sort of relies on the definition of alkyl and the inconsistency there as a signal that the applicant intended alkyl to use C1 to C12.

[00:13:06] Speaker 00:
Right, but that raises, just finding that there was an error doesn't answer the question of which way. I mean, it could be that the error was in putting in the 12, or the first time that C1 shows up, the error may have been it should have been C2. How do we know which it is?

[00:13:29] Speaker 01:
Your Honor, we don't know at this point, and it is a question of written description.

[00:13:36] Speaker 04:
Then the next question is, is it possible there's still a failure of proof here to get it to a jury? Because in this particular instance, if Dr. Young says, well, in circumstances like this, when a written-out number conflicts with a numeral number, it's likely the typo is in the numeral and not the written-out number.

[00:14:04] Speaker 04:
And if the standard is a person of skill in the art reading this would necessarily need to conclude that the C2 is really a C1, then perhaps what Dr. Young stated here isn't enough to meet that standard.

[00:14:24] Speaker 01:
I believe, Your Honor, that Dr. Young was pretty emphatic about the error in alkyl and that the person of ordinary skill in the art would have read the definition of alkyl to refer to mean ultimately and rely on the 1 to 12 range.

[00:14:39] Speaker 04:
He said two things. He said the numeral is likely to contain a typographical error, and then he ultimately backs that up with noting that...

[00:14:53] Speaker 04:
the alkyl groups are listed in ascending order.

[00:14:57] Speaker 04:
But then the district court seemed to make a good point that when you look at the alkyl groups in their respective definitions, you don't have perfect ascending order of the atoms in those examples. So I get your point, which is, if this is a fact question, then...

[00:15:22] Speaker 04:
Maybe this needs to go to a jury, but even if there is not all evidence is good enough evidence to get something to a jury is kind of the point I'm trying to explore.

[00:15:34] Speaker 01:
I understand, Your Honor. I just want to make two points. I see my time, and I've used my rebuttal time here, is up.

[00:15:40] Speaker 03:
You can answer the question. We'll give you some rebuttal time.

[00:15:42] Speaker 01:
Thank you, Your Honor.

[00:15:46] Speaker 01:
Sorry, now I've lost my train of thought. So first, I wanted to repeat the summary judgment standard, right? The evidence has to be viewed in the light most favorable to Ananta as the non-moving party. And I want to underscore that Pfizer did not submit any expert testimony in response to this whatsoever. There is none. So the district court sort of made her decision based on her reading of the specification and a pure attorney argument unsupported. And in that instance, I think it would be wrong to discredit or reject Dr. Young's testimony.

[00:16:22] Speaker 01:
His testimony is very reasoned. He has five to six pages of his expert report that explain the basis for his reasoning. He indicates that he does not believe the difference in substituted in the provisional and the non-provisional were inconsistent and that nothing broadened the scope of the disclosure of the provisional application. That's the evidence that should be read in the light most favorable to Ananta.

[00:16:48] Speaker 03:
That's it from FASA. Thank you. I'll give you three minutes for rebuttal.

[00:16:51] Speaker 01:
Thank you, Your Honor.

[00:16:55] Speaker 03:
Mr. Prinske.

[00:16:56] Speaker 02:
Thank you, Your Honor. May it please the Court.

[00:16:59] Speaker 02:
I'd like to begin with where Your Honor did with the question of public notice.

[00:17:05] Speaker 02:
We see this, notwithstanding all this discussion of genuine issues of material fact, as being a legal question. This court has routinely applied, both in the prosecution context in Rayota and in the district court context in the Novo Industries case, a high standard to deem a document to say something it didn't. And to elucidate the chronology that Your Honor alluded to, here we have a provisional application that discloses a long, long laundry list of different moieties that they considered to be their invention, putting the public on notice, this is what we possess.

[00:17:43] Speaker 02:
And one of those was the range NHCO C2 to C12 alkyl.

[00:17:49] Speaker 02:
Subsequently, Pfizer comes out with a compound which they contended in their infringement analysis in this case is an NHCOC1 alkyl. And subsequently to that, they filed a non-provisional application that broadened that range.

[00:18:03] Speaker 02:
into NHCO C1 to C12.

[00:18:07] Speaker 02:
Their principal argument below and their principal argument here is that this court should go back in time and sort of cross out the two and turn it into a one because it's an obvious error under this court's precedence for error correction. And we submit they can't possibly meet that standard.

[00:18:30] Speaker 00:
But suppose instead of there being 18 C2s and one C1 in the substitution definition. Suppose there was only one place where there was a C2 that showed up. So there was a tiny bit of lack of certainty. You wouldn't argue there that...

[00:18:57] Speaker 00:
You can't ignore that. That C2 is in there.

[00:19:00] Speaker 02:
I would for this reason. I think it's actually a misperception of this definition of substituted to count up the different C1s because they're all different moieties.

[00:19:10] Speaker 00:
I'm not counting the C1s that go with the same moieties other than C1 to C12. Just take the C1s to C12 and the C1... One C1 to C12 and then 18...

[00:19:25] Speaker 00:
C2 to C12. But I'm suggesting to you, I mean, you're taking a hard line on saying if it ain't there in Hike Verba, it can't be read to mean something that it doesn't explicitly say. And I'm suggesting to you there may be circumstances, maybe not this case, I don't know, but there may be circumstances in which You can't tell for absolute certainty what it meant, but you can reasonably conclude that that was what was intended to be conveyed.

[00:19:57] Speaker 00:
And under the written description standard, that's the test, is it not? Reasonably convey.

[00:20:04] Speaker 00:
Am I right about that?

[00:20:05] Speaker 02:
So that is the general written description test, but let me answer your question with two points. First, this is not a garden variety written description case precisely because... But isn't written description the standard that we apply in this setting to new matter? It is, but only where there's some argument about how the person of ordinary skill in the art would interpret what it actually says. Here, there's no argument. that NHCO C1 alkyl is supported by NHCO C2 to C12 alkyl.

[00:20:37] Speaker 02:
The argument is that the C2 must be wrong, and that's why I think, Your Honor, you need to apply the error correction cases. But the second point, and I think this is an important one in reading all of this, is that there aren't multiple C1 to C12 alkyls that should be considered as a group and totted up the way Your Honor presupposed. There is one and only one disclosure of the range of NHCO C2 to C12 alkyl. That's a different moiety with different atoms and different properties from NHCO, excuse me, from NHC1 to C12 and from C1 to C12.

[00:21:08] Speaker 03:
And what are we talking about? Appendix 127?

[00:21:11] Speaker 02:
We're talking about the definition of substituted. I believe it is Appendix 127.

[00:21:15] Speaker 03:
Yeah, 127. Line 25.

[00:21:18] Speaker 02:
Sorry, Your Honor? Line 25. Exactly right, Your Honor.

[00:21:25] Speaker 02:
The point is that each of these has different properties, and if the court treats this as a summary judgment question, if the court... Sorry, Your Honor.

[00:21:40] Speaker 02:
If the court were to treat this as a question of whether there's a genuine issue of material fact, there's no material dispute. There's no genuine dispute about whether NHCO C1 is disclosed anywhere. There are other C1 moieties, but to Judge Laurie's point, with precision, they identified particular ranges of particular compounds. We also have halo C1 to C4 alkyl.

[00:22:05] Speaker 02:
We have these alkenols and alkinols that they point to, but there's C1 to C12 alkyl and NHCO C1 to C12 alkyl are just not the same substituent.

[00:22:20] Speaker 02:
The other point of confusion that I think I urge this part to avoid is between the definition of substituted and the definition of alkyl.

[00:22:30] Speaker 02:
which is where, you know, that's at Appendix 124. That is a place where we agree that you could tell something's kind of wrong. You could tell that there is some kind of error there in that in this definition of how the C substituents work, it says C2 to C12 alkyl, and then that corresponds to 1 to 12 written as letters.

[00:22:54] Speaker 00:
Right, so that's pretty clear it's an error.

[00:22:56] Speaker 02:
That's pretty clear it's an error. Now, their expert conceded that you could fix it either way. You could turn the ONE to a TWO, or you could change the numeral. But that never got fixed in the non-provisional. The change that they want to carry backwards in time from the non-provisional to the provisional is in the definition of substituted, where NHCO C2 to 12 alkyl got changed to NHCO C1 to 12 alkyl. The alkyl definition... never got changed, and also never affects the scope of the invention because it's not the relevant, it doesn't define the scope of this claim term substitute.

[00:23:33] Speaker 00:
No, but it tells us something about what went into making this problem, creating this problem.

[00:23:40] Speaker 02:
It tells us what the terminology means. I don't agree that the way it's used, the alkyl definition tells you which substituents they consider to be part of their invention, whereas the definition of substituted does. They are saying that when they use the term substituted in the claim as a part of the definition of the A group in claim one, that whatever moieties are included, the ones they list are ones that they considered and are in possession of. That's what that says.

[00:24:11] Speaker 02:
And they're retroactively trying to change that. They're retroactively trying to broaden it.

[00:24:16] Speaker 04:
Let's assume written description is the right framework to use here.

[00:24:22] Speaker 04:
What more would you need Dr. Young to have said to have created a genuine issue of fact here as to whether the provisional reasonably conveys to an artisan the idea that these various substituents where they say C2 to C12 alkyl really meant C1 to C12 alkyl. You would have needed something to connect the dots between C2 to C12 alkyls as a general class and the particular substituent that... Well, what about the idea is there's a very clear definition of alkyl in this spec, and we know there's a mistake, and there's no...

[00:25:03] Speaker 04:
Let's say Dr. Young says there's no earthly reason why that C2 was meant to be C2. It's clearly a typo. It should have been C1. And any time you see this alkyl reference throughout the spec, it should be understood in the context of my alkyl definition here. And my alkyl definition, now that it's established that it's C1 to C12 to resolve that conflict, that resolution is now shot through the entire spec.

[00:25:39] Speaker 04:
So I don't understand Dr. Young to be saying, and I don't think Dr. Young could be saying... I know that, but I'm trying to explore with you what you think is missing to create a genuine issue that should go to a trial. Right, and what is missing is... One way to look at what Dr. Young has said is that maybe what he has said is enough to create an open fact question as to whether a skilled artisan would think that the content of this written description reasonably conveys the idea of C1 to C2.

[00:26:12] Speaker 02:
And I think the answer is something in the right part of the specification, something in the definition of substituted. that indicated that there was something amiss, that there was more than, in his view, a likely error, but that the person of ordinary skill in the art could not but read this definition of substituted.

[00:26:31] Speaker 03:
Was there testimony from the draft person or the inventor saying, I meant C1?

[00:26:42] Speaker 02:
There was testimony from the inventor that he meant C-1 and added it to the non-provisional.

[00:26:50] Speaker 02:
That was recognized after, by the way, the disclosure of Pfizer's compound.

[00:26:57] Speaker 00:
So it was not at the time of the provisional. Correct. He did not testify that the C-1 was intended at the time of the provisional, is what you're saying?

[00:27:09] Speaker 02:
Sorry, his testimony was that the recognition of an error was after the disclosure.

[00:27:14] Speaker 00:
Right, but the recognition of an error.

[00:27:18] Speaker 00:
Did he testify that at the time of the provisional he intended C1?

[00:27:24] Speaker 02:
He did. I would submit that that also does not...

[00:27:31] Speaker 02:
address any material fact because it's not a subjective inquiry.

[00:27:34] Speaker 00:
The answer to Judge Cleary's question, I think, is that he did testify at the time that at the time of the provisional, he intended C1 and C2 was put in by mistake.

[00:27:45] Speaker 02:
That's how I understand it.

[00:27:47] Speaker 03:
Does that raise a genuine issue of material fact for a jury?

[00:27:51] Speaker 02:
No, it does not because this is not a subjective inquiry. You don't get to say that you're... But his credibility, isn't that an issue? I don't think it matters, even if it were clearly true that he intended to write C1 instead of C2, even if that were established, which it is not. But even if it were, that would not make it an obvious error under this court's precedence, nor would it satisfy the written description standard, which is about what is disclosed to the POSA.

[00:28:23] Speaker 02:
I mean, I just don't think that his subjective intent is relevant under any of the governing legal standards anyone's advocated here.

[00:28:33] Speaker 00:
Well, it would be relevant if he had testified that I intended C2.

[00:28:39] Speaker 00:
You wouldn't disagree with that proposition, I think.

[00:28:43] Speaker 02:
I would disagree in that this is an objective inquiry.

[00:28:46] Speaker 02:
Written description is about what the provisional application here discloses to the person of ordinary skill reading it. I don't think it serves that notice function. I don't think it's consistent with the way patent specifications...

[00:29:00] Speaker 02:
embody a quid pro quo with patent claims to say that post hoc explanations of what you wish you had written should carry the day in terms of what you did right, to Judge Lurie's original point.

[00:29:14] Speaker 00:
And you also think that even if he had fully admitted that he intended C2 all the way along, that would be irrelevant. I agree. You're saying that.

[00:29:26] Speaker 02:
I don't think what the inventor says he meant matters. I think the relevant legal standard is how the provisional would be read, and in particular here, whether the provisional makes it clear that there is an obvious error that has to be read to mean something other than what it says.

[00:29:45] Speaker 03:
You're saying it's not obvious.

[00:29:46] Speaker 02:
I'm saying it's not obvious, and it is not obvious, number one, because there's absolutely nothing in the intrinsic evidence to suggest that the ranges are wrong. Their own expert conceded that the quote-unquote error is merely likely. He also conceded that the range that was in the original provisional has nothing chemically wrong with it. I mean, he testified, and this is at...

[00:30:17] Speaker 02:
Appendix 2220, that chemically you can have a C2 to C12 alkyl. It is not an error, apparently, to the reader of the specification through the eyes of a chemist, through the eyes of an additional chemist with the relevant skill set. And a further point that I think fatally undermines the notion that this could possibly be an obvious error all along is that Ananta itself, in advancing claim construction in this case, initially started out trying to do it the other way around. I think they were worried about, well, I don't want to speculate about their motives, but at any rate, the claim construction that they initially proposed or substituted changed the non-provisional range of C1 to C12 back to C2 to C12, NHCO C2 to C12.

[00:31:03] Speaker 02:
And then, you know, they either thought better of it or changed their minds for whatever reason. But the fact that they advocated that position, you know, is totally inconsistent with the notion that this would have been an apparent error to the reader that could only have meant NHCO C1 to C12 all at once.

[00:31:20] Speaker 04:
What does the written prescription standard reasonably convey mean?

[00:31:25] Speaker 04:
It sounds like a little bit of a generous standard in terms of trying to figure out whether the written description does or does not disclose a particular claim.

[00:31:37] Speaker 02:
So I think this is one of those issues that in this court's precedence – I don't know, has a very clear definition. I mean, I think the idea is that the person of ordinary skill in the art reading the specification would recognize that the inventor was in possession of whatever is in question. And here, the most, really the undisputed inference from NHCO C2 to C12 is that they would be in possession only of It reasonably conveys possession only of that range NHCO C2 to C12.

[00:32:14] Speaker 02:
The question then is, if you apply the written description standard, does it reasonably convey that this cannot have been deliberate, this cannot have been a range that they were indicating their possession of, but instead does this...

[00:32:29] Speaker 02:
convey that, well, really, when they said two, they must admit one. And I submit that it doesn't, even if this court were to treat it as a factual question, and even if this court were to go look at all the things that Dr. Young says about the definition of alkyl and about the presence of other one-carbon moieties other than the one they need and that they sought to add in order to find infringement in this case.

[00:32:53] Speaker 03:
You can use up to four minutes.

[00:32:59] Speaker 02:
Thank you very much for that, Your Honor.

[00:33:02] Speaker 02:
Let me just see what other points that I need to hit that I haven't already.

[00:33:08] Speaker 02:
I do want to go back to this question of whether it's a legal question or a factual question, because I think the district court here has been faulted at some length.

[00:33:20] Speaker 03:
What description is fact?

[00:33:23] Speaker 02:
Description is fact, but error correction is not. And INRE ODA, I think, is on all fours with this when it comes to what the – it was in a different posture than it was in the patent office in a reissue, but it was a new matter question. It was a question of whether the original application could be corrected so that the term nitrous acid that was in the original specification could be changed – nitric acid in the reissue specification.

[00:33:57] Speaker 02:
And the question there was, well, is that new matter? So it's new matter writ large, but what the ODA court did was it applied this obvious error standard. It treated that as a question of law. It said this is a question of law, even though compliance with the reissue statute has as underlying facts, the underlying factual question of is this new matter? And then it went through and reversed the agency on this question. The agency had said, well, akin to the case here, they said nitrous, they meant nitric.

[00:34:31] Speaker 02:
The ODA court said, well, that can't be right. This is an obvious error on these facts because the specific gravity of nitrous is wrong. It has to be the specific gravity of nitric. The person who ordered our ceiling art would have known that nitric is the only thing that would work in this context. And they performed de novo, after saying expressly it's a matter of question of law, they performed de novo an analysis of whether it was an obvious error And, you know, the fight before the district court was, should we apply ODA or should we apply NOVO?

[00:35:11] Speaker 02:
But on this question of, well, is this a factual written description question, the answer under either is no. It's a matter of correcting a public patent document to say something it didn't, which is something that is consistently treated as a question of law. And in a question of law that, moreover...

[00:35:33] Speaker 02:
should not be allowed to expand the invention from what was disclosed to the public, what they chose to disclose to the public in their provisional application.

[00:35:41] Speaker 00:
I missed the way you characterized what has been consistently applied as a questionable law. What is the characterization of the questions that are subject to that rule?

[00:35:57] Speaker 02:
The alteration, the retroactive deeming of a patent document to say something other than what it actually said is I guess perhaps the crispest formulation I can give you.

[00:36:11] Speaker 02:
Changing the two to a one, not because two would reasonably convey to the poser that they also might have been able to use a one, but because the two was actually an error and could not possibly have meant anything other than one.

[00:36:35] Speaker 01:
First, let me take on my co-counsel's characterization of ODA. So Judge Rich does say that the ultimate question is whether the Patent Office has the power to reissue, dependent upon whether there's new matter involved. It's a statutory authority question.

[00:36:56] Speaker 01:
However, he then goes on in the same paragraph to say that the actual analysis of new matter is a factual one, and it has to be done on a case-by-case basis. He's applying 112. I also want to address the question...

[00:37:27] Speaker 01:
Your Honor, you have a clean copy in front of me.

[00:37:35] Speaker 04:
Maybe 1357 to 1358?

[00:37:39] Speaker 01:
I'm looking. I guess the reference I have for Oda would be at page 1203 of the Federal Reporter, a second.

[00:37:49] Speaker 04:
1203, yep. So then...

[00:37:57] Speaker 01:
Judge Rich goes on then to take the testimony to hear the expert witness, the expert chemist, in support of the argument that there was a translation error and looks at the specification as a whole and performs the standard 112 written description analysis to assess whether the correction of the translational error added new matter or not. So it's a typical 112 written description analysis.

[00:38:26] Speaker 01:
This concept that ODA creates a high standard for obvious, I just want to make the point that Judge Rich isn't saying beyond a reasonable debate, which we see Mr. Krinsky kind of edging into over and over again.

[00:38:42] Speaker 03:
It's not useful to keep dropping the name of one particular judge who spoke for the court in an opinion.

[00:38:53] Speaker 01:
Thank you, Your Honor. So the second to the last paragraph of the ODA decision identifies that there can still be some confusion or perplexity over the change.

[00:39:07] Speaker 01:
In the decision, it reads, the mere fact that a change deprives a phrase of a needed antecedent so that the reader might be somewhat perplexed or confused doesn't mean that you conclude that there's been an injection of new matter.

[00:39:21] Speaker 01:
So obvious is clearly a different standard from beyond reasonable debate.

[00:39:29] Speaker 01:
Now, throughout the argument that was made by Pfizer, there's this underlying assumption that the change broadened the scope of the disclosure in some way. But, Your Honor, that actually proves the point, that the question is, to a person of ordinary skill in the art, was the disclosure broadened or not?

[00:39:49] Speaker 01:
That's the written description question on the table.

[00:39:53] Speaker 03:
Well, the written description is something there that isn't there.

[00:40:00] Speaker 01:
And whether that expands the scope of the disclosure or not.

[00:40:05] Speaker 03:
I want to direct the Court's attention... We're not dealing with infringement, whether something is within the scope of the claims. We're talking about an obvious error. And if that's reduced to a written description question, the written description question reduces to whether something is there or not.

[00:40:24] Speaker 01:
Correct, Your Honor.

[00:40:24] Speaker 03:
And it isn't in the provision.

[00:40:29] Speaker 01:
So the number changed, but the disclosure did not. And ANTA presented expert testimony to that. To that effect, I want to direct the court's attention to the Commonwealth Scientific case. I think that it's particularly relevant to the situation here. In that case, the patent applicant changed language in the specification and in the claim during prosecution from greater than 10 gigahertz to the phrase radio frequency. That happens repeatedly, and the inquiry before the court was, Did that destroy the priority claim?

[00:41:05] Speaker 01:
Was that new matter? Or would a person of ordinary skill in the art reading the disclosure have understood that the disclosure captured radio frequencies as a whole, which were recognized by the person of ordinary skill in the art as between 3 and 300 gigahertz? So I commend that case to the court's attention.

[00:41:26] Speaker 03:
Thank you.

[00:41:27] Speaker 01:
Thank you very much.

[00:41:29] Speaker 03:
Thank you to both counsel and cases submitted.