Oral argument — Harari v. Hollmer

Good morning. May it please the Court, the Board's decision in this case ignores the that a patent and its continuations of that parent constitute one continuous patent application. The Board's interpretation of the incorporation by reference statements that were made in Harari's continuation patent application is not plausible, knowing that the 880 application, the application, the involved application in this interference, is a continuation application, because the reader of that application would know that the entire 880 disclosure, including the incorporation by reference statement, was contained in the parent 556 application. Let me ask, this is one of a series of continuations, and in the earlier continuations you managed to avoid the problem that arose here. Why did you shift gears in terms of how this particular continuation was handled? The 566 application incorporated the entirety of the 579 application. 566 is a system application and 579 is the circuitry that goes into the system. Claims to that circuitry specifically were not introduced until the 880 application in order to provoke an interference. So it just simply didn't come up. When the 880 application was filed, apparently because they were going to direct claims to the 579 material that had been incorporated by reference, they actually filed a preliminary amendment to expressly insert the material that by law had already been incorporated by reference. Now can you tell me, just to reiterate for me, what you read the board or the examiner have said you should have done instead of what you did? Was it that it was a critical missing aspect that you didn't do the oath? How would it have worked out under the system that they're saying you should have followed? Well, I think the relevant things that the board said that could have been done is the original 566 application could have been amended to insert the serial number and filing date of the 579 application once the serial number and filing date had been obtained. But they weren't saying that that's what was necessary to do, right? I understood that it was something. You could have avoided this perhaps. What they were saying is you should have filed an oath with a preliminary amendment so that... That's another thing that could have been done. They said, as I recall, that when the first continuation was filed there could have been an amendment to insert the incorporation by reference statement into the incorporation by reference statement, a serial number and filing date, or maybe insert the entire substance of the express language of the 579 with all the drawings into the first continuation and subsequent continuations. They may have said that a declaration would have been required. I don't believe that's true because since the 579 was incorporated into the 566 to begin with, incorporating it by reference into any one of the... into the next continuation would have been incorporating material that was already in the 566, so substantially there was no change in the content of the application. Which is to say, I take it that, for example, if you had simply put in the serial number at a later time, that would not be new matter? That's right. At any time the serial number could have been put in and it would not have been new matter. And there's no dispute, I take it, I mean, nobody would take seriously the contention that that's impermissible because of the new matter problem? No, I think the board said that that would be new matter, to put in the serial number. Just to put in the serial number? Right. I think that's wrong. I mean, as long as... I thought you were saying that that wouldn't... I'm sorry. In other words, what you're saying is... I was asking again, I didn't ask the question correctly. I was asking, are you saying that it would have been, in the board's view, a new matter problem to put in... just to put in a serial number? Everything else stays the same and you just say, well, the serial number, we now know what it was because we didn't know it at the time. It is this. It wouldn't have been a problem, in the board's view, in 566 as far as I know. My recollection of their decision is they might have said it would have been a problem, it would have been a new matter problem in subsequent applications if we had not also included a declaration, a new declaration. But I think that's flatly wrong because the material was incorporated into the 566, identified a specific application, which is readily identifiable if you know what date it was filed, which was April 13, 1989. And once that was in there, it was in there. And inserting the serial number at any point along the way is not inserting new matter. But, yes, that's responsive. Thank you. So, by including the incorporation, the reader would know, by looking at the 880, because it's a continuation application, that all of the material in the 880 had to be in the 566. It's not necessarily that everything in 566 was in the 880. That's a different issue. That all of it, because it's a continuation, on the face of the 880 application, all of it was contained in the 566. And so they would go back to the 566 and see what was filed on the same date, exercising merely the reasonable diligence required by Henry Howarth. Wouldn't they have to go back serially between these various continuations to do that? No, because every time a continuation is filed, you're obligated under Section 120, and Section 120 authorizes that you put in an amendment which states cross-references to the prior applications. And in every one of the continuations, there was a cross-reference inserted which said, this is a continuation of such-and-such, which was a continuation of such-and-such. So a one-sentence statement, permitted by, in fact, required by Section 120, takes them right back to the 566 application. And you filed as well the entire previous application, the 566? Yes. That was all contained in there, including the date at which that was filed? Yes. In each case, what was filed with each continuation was literally a photocopy of the 566 application. Every disclosure filed, which included the incorporation by reference statement, was identical to the 566. So there's common subject matter. But in your application itself, you just go back to the most recent previous application. You identify that. There is a difference in that, for some reason, I don't know why, in the 880, they said it was a copy of the immediately preceding parent. But in the immediately preceding parent, it said that it was a copy of the 566. So up until that immediately preceding parent, through that immediately preceding parent, they actually stated it was a copy of the 566, whereas in the 880 it said it was a copy of the immediate one. But nonetheless, just looking at the one sentence statement in the preliminary amendment, which gives the history, it would be very clear to anyone that this all goes back to the 566 and that was a starting place in census to continuation application. On the face of it, that incorporation by reference statement had to be back in the 566, and you would look at that incorporation by reference statement not at the time that the continuation application was filed, but back when the statement was made, which was April 13, 1989. You do that not only because that's common sense, but because that's required by Section 120. If we were to agree with you, what's left of this case? What is the posture? Well, the judgment of the Board is reversed, and Harari prevails on Motion 1 of Homer, and I don't think there are any issues left, actually, in this case. I think that eliminates this particular case. I think the other side mentioned in its briefing, trying to identify it now, that it reasons why it still had to go back. We can ask them about that. I guess I'd have to look and see if there are any issues left. I was thinking it would eliminate the case. It would certainly be the final decision regarding whether there is Section 112 support, written description, for the claims involved in the interference. Let's see, where am I on time? You have a few seconds left before you start into your rebuttal time. Okay, well, I'll just quickly add several points. In Henry Hogan, it was, even aside from what I just said, Section 120 embodies the law as it was in the 1952 Patent Act, and that embodies Godfrey Ames, which, so under Section 120, the person's entitled to their effective filing date. When you're looking at the date when the continuation applications were filed and statements about when they're filed, 120 requires you to be looking, really, at the effective filing date. And I'll reserve the rest of my time. Thank you. Very good. Well, we'll hear next from Mr. Gissler, is that correct? Gissler. Gissler. Gissler. May it please the Court, this case is an interference between two parties. It's the 880 application, the appellant's application, that was filed in 1999 after the filing of our application. The issue, as counsel just mentioned, they put claims, new claims, after 10 years, new claims into this application. The first time they put these claims into the application. It is an application. Those claims have to be supported, as in any application, by the disclosure in that particular application. That's what 112 is all about, the written description requirement. So the starting point for the analysis is, does the 880 application have a written description under 112 for the claims that they want to put in, which was claims 76 to 80, which is part of the account? And the answer is no. They don't have the subject matter under 112 to support the claims that they are now seeking to obtain. They don't have them because the subject matter they want to incorporate by reference was not properly accomplished. And it wasn't, yes? Properly accomplished because it had the reference date, but there was ambiguity given the way the document set forth the reference date as to what that actual date was. Multiple problems. There was the ambiguous reference statement. There was the failure to put in a proper declaration with the way they tried to do it, with the amendment. They did not have an inventor declaration. So procedurally, these are very, in one way, as a patent lawyer, these are somewhat simple things. But those are alternative ways of solving the problem, right? I mean, those aren't cumulative in the sense that if they had taken care of the first, the second wouldn't be a problem, right? No, I think they would still have, depending, I think they'd still have to have a proper declaration if they're going to add to the 880 application. In other words, they want to incorporate by reference material. There may very well be additional subject matter under the rules that, if they weren't doing it on the same day, I should respond. But I thought the essence of the problem was the ambiguity created. Yes. And in that respect, I mean, we've all got lots of problems, lots of ways. Beyond it being a problem, I didn't see anyone pointing to what it actually violated. Certainly nothing in the statute in terms of the detail. Well, but that's just the start. Getting it into the application, the 880 application, first of all, I would not in any way minimize that it's, quote, a problem. I mean, it's their patent. It shouldn't be shifting the burden to the rest of the country, so to speak, to all of a sudden figure out exactly where the ambiguity is. Well, actually, that's an interesting point because the board's analysis seemed to be based entirely on sort of how one skilled in the art would have construed it, and it would have been problematic really looking, as you suggest, to the public. But it seems to me in this context where we're dealing with an application and not with a patent out there, why are we not simply confined to a reasonable examiner standard? This isn't out there in the public. To the extent there was ambiguity, as long as the examiner wasn't misled in a way that would lead him to do something unlawful or improper, why do we care, why is the standard of evaluation ordinary skill of the art publicly? Well, my practical answer is going in the wrong direction in teaching the patent bar how to write patent applications. I mean, to suggest... Well, I don't think anybody is suggesting that this was done ideally, and there's nobody, regardless of how this case comes out, nobody's going to take the lesson away from it, and say, aha, that's the way to do it. I don't think Mr. Birdwell would make that intention either. No, but that's why this is an interference. So there's immediate impact on the patentee, which is our client. But to answer the other question, so if they were able to still get that application, that additional subject matter into the 880 application, the other inherent question is how far back does that go? Do you think this would be ambiguous to a patent examiner, though? Excuse me? Would this be ambiguous to a patent examiner? Wouldn't it be very easy for him to figure this out? I was a former patent examiner. This is complex technology. Well, we're not talking about technology here. We're just talking about the sequence of incorporation. Well, I think an examiner would understand that the language has to be amended. An amendment should have been filed. I mean, a declaration should have been filed. No, a declaration should have been filed, but that's not the same thing as saying that the examiner would have been befuddled by the incorporation language in the original application when that incorporation language showed up later. I don't think he would have been befuddled. I think it would require him, as it would everybody else, to now go back and look for that application. If you just stay with the language, the incorporation by reference language, and something was filed on the same date as the 880 application, that's what he's looking at. When we're talking about the examiner, he's looking at the 880 application, and that language, as filed, says there is another application incorporated by reference that was filed on the same date as the present application, which is the filing date, the 880. So the examiner would have to now do a couple of things, which is the other issue I want to discuss. But they filed the transmittal. They filed something that contained an explanation of this. They filed the earlier patent with the cross-reference language where it's clear looking at that, what the date is relevant to what the reference is. So I'm not sure I can kind of see why the examiner would have been befuddled. Well, because that goes into the other issue about the chain, the continuing chain, which is what Zina talked about. I mean, this is a continuation after continuation after continuation. Merely because you call, and the board pointed this out, Zina points this out, merely because you call something a continuation or a continuation in part or a divisional, that doesn't make it, substantively, the intervening applications that they are, in fact, continuations. You really have to do some substantive analysis and go, okay, is this truly a continuation application? Right, but the nub of the befuddlement stems from this incorporation by reference language. And I'm not sure why, looking at the earlier application in its entirety, the transmittal, the stuff that was contained in the package here, one wouldn't easily, well, nothing is easy in patent law, but one wouldn't be able to sort that out pretty routinely. Except for the adjective that is routine, it can be done. The board recognized that. Everybody recognized it can be done, assuming also, although this is not on record, assuming also that the original 579 source application is available in the patent office because it's abandoned, you know, you have to find that. But, yes, it can be done. I think the bottom line question is, and the board talked about this and everybody talks about this as well, what is the process that has to be done to, under the law, be assured that they can, 10 years later, in the 880 application, meeting all of the requirements for continuation practice, for new matter practice, for inventor declaration practice, all those procedures that are in place, how are we assured of that? Well, you're not assured of that by merely just saying, well, this is a continuation of a continuation of a continuation. If you're going to do, if one is going to do his or her due diligence, you have to substantively go back and look at every application in the chain if they're going to rely on subject matter that was 10 years old. We just don't say that, but it can be done. Am I correct that the 880 is described as a continuation of the 708, I believe? When you go to the 708, does it say it's a continuation of the immediately preceding application or does it say it is a continuation of 566? No, this, my understanding, this is in the amendment that they put in, in the 880 application, and just looking at my chart here, what that language said was that the 880 is a continuation of the 708, which is its parent, which is a continuation of the 768. In the cover letter of the application itself, does the 708 say it's a continuation of the immediately preceding or does it say it's a continuation of the source? I don't know how to answer. I'm not sure I looked at what the 708 application actually says, but that is part of the analysis that you have to do if you're looking at the 800. You would look to see if, in fact, the 708 was properly claiming or covering and met all the requirements to be a continuation in the chain. That's all part of the analysis. If the 880 application, when it was filed, if the prosecuting attorney had scratched through the words filed on the same day and written in pencil the serial number of that application, would that be objectionable as new matter? Possibly, yes. I mean, you have to take a look at, yes. I mean, just merely because, first of all, it's inconsistent with the language in the original language. It's changing, modifying, making some changes that are different from the… It's not making a change. It's simply putting in something which is true but wasn't known on the original day. So if it's new matter, it's only of the most technical sort, don't you think? Well, only… I mean, would you say in other words, would the examiner necessarily have to say, no, you can't do that, it's new matter? Well, the only… Well, the examiner can do all of that. Yes, but would he be required to? Excuse me? Would he be required by the rules and practices of the patent office to do that? Yes, because there's another issue with… I just want… If I could just answer the… You mentioned that they could have done it, if I understood the comment correctly. They should have done it 10 years ago. Well, I understand. But the question is, when they got to this point, they had a problem. Right. So I'm asking, is that a way they could have solved the problem? And you're saying no. Not without further analysis. You have to see if they're adding new matter. I thought you just told me that that would constitute the adding of new matter by putting in the serial number. Well, you'd have to do the analysis. Well, what's the analysis? The question is, you know what the documents are. I'm saying one simple thing. They crossed through those words and they put the serial number. Okay, so now you're talking about a specific patent application that we could go back to and take a look. In relation to the incorporation by reference language, the incorporation by reference language said we're only incorporating verify erase and verify program. That's the subject matter that they're incorporating. That's what they said substantively that they want to incorporate. The 579 application may have a lot more information in there, which if they wanted to bring it in in the 880 ten years later, outside of this incorporation by reference language, that could possibly be new matter. Well, I thought they just identified the application, didn't they, and said it was filed on the same date. That's a way of identifying it. Wouldn't the scratching out, as Judge Bryson said, wouldn't that be just a different way of identifying it and wouldn't it be new matter? Well, if they did that back in... No, I mean today, when 880 was filed. Well, yes, it would, because when you say just, that's hard for me to, because it's not just. What does that serial number mean? I mean, it's just not a number. It means they want to introduce new subject matter into the application. No, it's the same subject matter. That was not in there in the original. No, the only thing that's changed, and maybe my question wasn't as clear as it should have been, I'm not suggesting that they're referencing a different application. I'm saying, suppose they sat down with the examiner and they said, well, we're going to explain to you now and make quite clear to you that that application that is referred to in the text of the original application was referencing what has now been identified as serial number, thus and such, and therefore we're going to put that serial number in there. And the examiner, my question to you is, could the examiner say, oh, sure, fine, or would the examiner be required to say, no, I'm sorry, that'd be new matter, you can't do it. You have to do it a different way. If he can allow him to do it, but the analysis doesn't stop there, then you have to take a look and see what is that subject matter, because it's incorporating by reference, it's something. So it's a number to the examiner. What does that mean to the examiner? Okay, I see a new serial number, so you're changing, it could have been a serial number that was 805 instead of 806, and they changed the number. Okay, so what does the examiner do with that? It just doesn't say, okay, go ahead and do that, and now I'll examine the application and go ahead and prosecute it, and knowing that this was from 10 years ago, and knowing now with further analysis that it's an abandoned application, and now knowing that there are claims, 76 to 80, that they want to get patent protection for, and just say, okay, I'm going to give you the claims, because you're changing 10 years later, or putting into this application, the 579 serial number. Okay. Now the other thing is, which is just the, you know, the other thing that's in here that everybody at the board talks about, even if they did that, what's the date? Is that new matter or not? What's the date that the claims get for that subject matter? Is it limited to the 880 application filing date, or are they entitled by priority to all the intervening to go back to the earlier application? We understand that. Thank you very much. Mr. Birdwell, you have, I think, your full, well, not quite your full five minutes, but you have the bulk of it. Thank you. Just a few points that I'll bring up and rebuttal. I don't believe there was any ambiguity when you take into account either of two things. One is Section 120, which we say requires that you apply the effective filing date. So when you talk about filed on the same day, that's the effective filing date. And two, it would be very clear to a person reading the patent application and the preliminary amendment that inserted the history that there was a continuation, a continuation, a continuation going back to the 566 application, since it was facially a continuation application. Whether that might not have been true or not really doesn't matter. The question is what would a person reading it think the incorporation by reference was referring to, and it would be clear, with just a minor thought, to see that the incorporation by reference statement was first written in the 566 application, thus it would be referring to something filed on April 13, 1989. Second, the examiner wasn't befuddled. In fact, was not befuddled. This issue didn't come up before the examiner. It came up when Homer made this argument in the course of the interference and the board decided to latch on to it. And so this went through the examining process as entire continuations, including the examiner who examined for purposes of the interference before the motion period began. None of the examiners were disturbed by the way the incorporation by reference was made. In the 708 application, you did make reference back to the 566. Yes. And call it a continuation of 566. Yes. And when you got to the 80, you didn't say it was a continuation of 566, but of 708. The difference was that in the 708, the preliminary amendment said that the copy was a true copy of the 566, which was the case for each of the prior continuations. In the 880, for some reason, they said it was a true copy of the 708. But in all cases, it was made perfectly clear by the one-sentence insertion and references to other patent applications that the 880 was a continuation, the 708 was a continuation, blah, blah, blah, not to the 566. So that was very clear. What's the situation with the related cases? There are some other cases that are they all being stayed based on this? Is it the same issue in this and in the related cases? Yes, this court has stayed briefing in two cases. Do they present the identical issue here? Yes. Is there an assumption that this will? Yes, they do. This outcome, depending upon how the court decides, could eliminate or at least reduce the issues in the other two cases. Tell me, as a matter of patent practice, if you had an application like the 880 and the examiner decided to issue the application as a patent, would the examiner, in the course of preparing the patent for its issuance or the application for its issuance, change language such as filed on the same day as the present application before it went into final form? I think it's likely the examiner would ask the applicant to amend the application to insert that at that point because that would be clearer. But it's not required by law, and if the examiner and the examiner's discretion chooses not to make that requirement, well, so be it. Thank you. Okay. All right. I understand. So another point in my four seconds is that, well, I think I already made that point. Well, I think you actually are entitled to a little more time. Mr. Fleisler, we took him over his time a bit, so if you have another point, you should feel free to make it. Well, okay. So thank you. I will say that there was really no reference to a problem with the 880 application. As I see it, the applicant did not make these amendments to correct a problem. The reason the applicant did this is because this was an interference. They were making claims that were specifically dependent on the information that had been incorporated by reference. They wanted a patented issue with that material expressly stated in the application rather than one where it wouldn't be there, and it just made good sense to have a good patented issue there. Thank you very much. Thank you. The case is submitted. We thank both counsel.