[00:00:05] Speaker 02:
this afternoon.

[00:00:06] Speaker 02:
That case is 18-2390 Hyatt v. Stewart.

[00:00:16] Speaker 02:
Mr. Grossman, you have referred three minutes of your time for rebuttal, is that correct?

[00:00:20] Speaker 03:
Yes, your honor.

[00:00:21] Speaker 02:
All right.

[00:00:27] Speaker 03:
Good afternoon, your honors.

[00:00:29] Speaker 03:
May it please the court, Andrew Grossman, for the appellant, Gilbert Hyatt.

[00:00:33] Speaker 03:
Mr. Grossman,

[00:00:34] Speaker 03:
The way I see it, you have three problems.

[00:00:37] Speaker 04:
First is our last opinion, Hyatt 2, and that the district court, in its opinion, strove to follow it and to apply it, and articulates how the court's doing that.

[00:00:51] Speaker 04:
Second, the district court's multiple determinations that Mr. Hyatt's testimony was not credible, for example, at page 28, but it's throughout his opinion, and third,

[00:01:05] Speaker 04:
The briefing before this court, which contains multiple misrepresentations and misquotes.

[00:01:12] Speaker 04:
And that's where I want to go.

[00:01:14] Speaker 04:
I'm just going to ask you not a lot about that, but I'm not happy about it.

[00:01:20] Speaker 04:
On pages 12 and 13 of your blue brief, you quote the district court ruling in favor of the PTO on lastness.

[00:01:28] Speaker 04:
And you say the district court emphasized that the PTO

[00:01:32] Speaker 04:
fell well short of how this court believes, I'm quoting, government agencies should engage with zealous members of the public who seek to vindicate their rights.

[00:01:43] Speaker 04:
That's not what the district court emphasized in Hyatt 3.

[00:01:47] Speaker 04:
That was Hyatt 3 talking about what it once said in Hyatt 1, which this court reversed.

[00:01:57] Speaker 04:
What the district court did say in 2024 was that no other result than judgment for the PTO is even colorable.

[00:02:07] Speaker 04:
And when you drop that kind of language and say that the court once castigated the PTO for its chutzpah, and don't say that was before you reversed it, I think you're trying to mislead the court.

[00:02:26] Speaker 04:
on page 26 of the opening brief you selectively quote Overland Motor.

[00:02:35] Speaker 04:
Why do you selectively quote from it?

[00:02:37] Speaker 04:
Here's the quote, but what you omitted is what I'm going to emphasize.

[00:02:44] Speaker 04:
During the pendency of the application in this case, the period allowed was one year.

[00:02:49] Speaker 04:
We do not know on what principle we could apply the equitable doctrine

[00:02:54] Speaker 04:
of abandonment by latches in a case where the measure of reasonable promptness is fixed by the statute, comma, and then you left off, and no other ground appears by reason of which latches could be imputed to the applicant.

[00:03:08] Speaker 04:
On page

[00:03:10] Speaker 04:
10 of the reply brief, and on 22 and 23 of opening brief, you offer a perspective on Woodbridge, which the PTO disputes.

[00:03:26] Speaker 04:
Why did you argue Woodbridge is more limited than the actual holding?

[00:03:31] Speaker 04:
And again, I'm going to read what you said and what you left out.

[00:03:39] Speaker 04:
You said, quote, Woodbridge held that an applicant was not entitled to the issuance of a patent under a special bill, close quote.

[00:03:47] Speaker 04:
And Woodbridge was supposedly limited by the Supreme Court in Overland Motors a few years later to the conclusion that the applicant's intentional delay was, quote, a breach of the condition upon which he might avail himself of the special congressional privilege granted him.

[00:04:08] Speaker 04:
in special legislation.

[00:04:10] Speaker 04:
What you leave out of the quote from Overland Motors is that before it said Woodbridge held that the delay of nine years for the avow, that Woodbridge, quote, held that the delay of nine years for the avowed purpose of postponing the period of the monopoly was latches and a breach of the condition.

[00:04:31] Speaker 04:
You left that part out.

[00:04:33] Speaker 04:
Why?

[00:04:34] Speaker 04:
All of those things I believe attempts to mislead the court.

[00:04:37] Speaker 03:
Your honor, we certainly did not attempt to mislead the court.

[00:04:40] Speaker 03:
We quoted the materials, we cited the appropriate pages.

[00:04:44] Speaker 03:
With respect to Overland Motors, I think the decision strongly supports our position regarding the availability of latches in this case.

[00:04:50] Speaker 03:
The reference to other circumstances was a reference to the other types of circumstances where there were not

[00:04:56] Speaker 03:
congressionally enacted deadlines that might support an application of laches.

[00:05:00] Speaker 03:
I think if you look at that paragraph in the preceding paragraph of Overland Motors, that's abundantly clear, where the court discusses the context in which laches might apply.

[00:05:08] Speaker 03:
Did you think I would not look at it?

[00:05:10] Speaker 03:
Do you think we don't read those cases?

[00:05:12] Speaker 03:
Of course I believe you read those cases, Your Honor, which is why I think that our quotation from Overland Motors is a perfectly accurate and correct quotation of that and actually is not misleading in any respect.

[00:05:25] Speaker 03:
Because I think that taken in context, that is what the case stands for.

[00:05:29] Speaker 03:
It stands for the proposition that where Congress has fixed the period to act, that the court cannot override that by application of latches.

[00:05:38] Speaker 03:
And that was not a new principle that the court applied in Overland Motors as that decision recounts.

[00:05:44] Speaker 03:
It's something that the court had stated repeatedly going back all the way to the Bell case.

[00:05:50] Speaker 03:
And it's something that the US Supreme Court has said more recently in SDA Hygiene and Petrella.

[00:05:56] Speaker 03:
That is our fundamental argument on this appeal, that Congress has fixed the time to act with respect to every

[00:06:02] Speaker 03:
piece of prosecution conduct.

[00:06:05] Speaker 03:
And where Congress has done that, there is simply no room for latches.

[00:06:08] Speaker 03:
That is the core holding of SCA hygiene and patrol.

[00:06:11] Speaker 03:
And it's something that's reflected.

[00:06:12] Speaker 04:
And your citation to Hyatt 1 without saying that Hyatt 3 was exactly different and the court said so?

[00:06:22] Speaker 03:
Your Honor, the district court quoted its own views for a reason.

[00:06:28] Speaker 03:
And I don't think we hid or that it's any surprise to this court what the ultimate result of the district court's opinion was on remand.

[00:06:36] Speaker 03:
I mean, we certainly did not hide the ball on that.

[00:06:39] Speaker 03:
You just dropped the language.

[00:06:41] Speaker 03:
Your Honor, we did not quote every single piece of the opinion in our brief.

[00:06:46] Speaker 03:
You didn't quote every single piece of the sentence in your brief.

[00:06:50] Speaker 03:
Your Honor, we were not trying to mislead the court.

[00:06:52] Speaker 03:
And I think that we made perfectly clear the overall thrust of the district court's opinion.

[00:06:57] Speaker 03:
And certainly, the result is true.

[00:06:59] Speaker 03:
You had to, since he rolled against you directly.

[00:07:01] Speaker 03:
Pardon?

[00:07:02] Speaker 03:
You had to.

[00:07:02] Speaker 03:
Since he rolled against you, you're appealing his decision.

[00:07:05] Speaker 03:
Yes, Your Honor.

[00:07:06] Speaker 03:
But as I said, we were not hiding the ball on that.

[00:07:08] Speaker 03:
And we did recount the court's reasoning in support of that decision.

[00:07:12] Speaker 03:
Well, this judge thinks it's misleading.

[00:07:16] Speaker 03:
I apologize for that, Your Honor, but I think that I respectfully disagree that we engage in any misleading quotation of the opinion, or certainly a decision like Overland Motors, and certainly not our discussion with respect to Woodbridge.

[00:07:32] Speaker 03:
Again, Overland Motors, that final paragraph.

[00:07:35] Speaker 03:
Let's go to the merits.

[00:07:37] Speaker 03:
Yes.

[00:07:38] Speaker 03:
Yes, Your Honor.

[00:07:39] Speaker 03:
As I said, our core argument on this appeal is simply that Symbol is no longer a good law.

[00:07:45] Speaker 03:
Symbol reasoned that the act incorporates a prosecution latches defense based on the lack of any legislative history to the contrary.

[00:07:54] Speaker 03:
Subsequent to Symbol, the Supreme Court made clear in Petrola and SIA hygiene that there is a required threshold inquiry when a court is going to apply latches to a statutory scheme, which is, is there a timing gap with respect to a particular action

[00:08:08] Speaker 03:
In that statutory scheme this court in symbol did not undertake that inquiry in fact it rejected that proposition when the when the when the patent holder in that case Proposed that in fact Congress had filled the gap by prescribing the timing of continuing applications not only that but

[00:08:30] Speaker 03:
The reasoning that was applied by Symbol is precisely identical to the ruling of this en banc court in the SDA hygiene decision that the Supreme Court overruled, adopting instead this gap-based approach that avoids overriding the timing provisions that have been enacted by Congress.

[00:08:50] Speaker 03:
So we think it's crystal clear that symbol is no longer good law and that the court is required to undertake the mode of analysis that's required by SCA hygiene and by Petrella.

[00:09:03] Speaker 03:
And that's a very straightforward analysis in this instance.

[00:09:06] Speaker 03:
The court simply asks, are there any timing gaps with respect to

[00:09:10] Speaker 03:
period with respect to the prosecution of patent applications.

[00:09:14] Speaker 03:
As we described in our brief, there simply are not any.

[00:09:17] Speaker 03:
Congress has prescribed the timing for every single step that an applicant is authorized to take.

[00:09:22] Speaker 03:
The PTO's response has actually not disputed that point.

[00:09:26] Speaker 03:
The PTO instead has raised the exact

[00:09:29] Speaker 03:
manner of argument that was rejected by the Supreme Court in both SCA Hydrene and Petrella, that there is no time limit with respect to what it calls overall delay.

[00:09:40] Speaker 03:
In Petrella, for example, the copyright holder in that case had delayed 18 years before bringing the infringement claims that were at issue.

[00:09:50] Speaker 03:
The argument was made and was embraced, in fact, by the dissent.

[00:09:53] Speaker 03:
that there was no time limit that prevented a copyright holder from doing that, and that therefore provided a gap for latches.

[00:09:59] Speaker 03:
The court rejected that out of hand, stating that where Congress had conferred the right to bring suit at a particular period in time, that was a right that was authorized by statute,

[00:10:10] Speaker 03:
And it was something that, therefore, the court could not override via application of latches.

[00:10:15] Speaker 03:
The same argument was broached in SCA hygiene with respect to its similarly rolling statute of limitations.

[00:10:22] Speaker 02:
So your argument is that hygiene and Petrola over rolled symbol?

[00:10:28] Speaker 03:
implicitly overrule, Your Honor, although I think it might even be explicitly overrule, given that this court's decision in SCA hygiene embraced the exact same reasoning as symbol.

[00:10:41] Speaker 01:
What about the notion that it was well established enough at the time of the 52 Padnak that we should assume that Congress intended to carry forth prosecution of Stauffold in the statute?

[00:10:56] Speaker 03:
Well, Your Honor, I think that

[00:10:58] Speaker 03:
A couple of responses to that.

[00:11:00] Speaker 03:
The first would simply be that, you know, that is exactly what the court had, you know, the view that the court had in SCA hygiene in the on-box decision and Your Honor's dissent, of course.

[00:11:12] Speaker 01:
Well, sure, I understand that and that the court had been consistent and the Supreme Court had been consistent in that application and said nothing can be carried forward, that'd be fine.

[00:11:20] Speaker 01:
But then we have Minerva, which is the assider estoppel case, where they did find a prior common law doctrine was incorporated in the 52 Act.

[00:11:30] Speaker 01:
So it seems to me that it's not just we can look at the reasoning in SCA and Petrilla to get rid of prosecution latches.

[00:11:37] Speaker 01:
But we have to look at that separate question of, was prosecution estoppel well enough established prior to the 52 Act that we should assume that Congress intended to incorporate it?

[00:11:48] Speaker 01:
And I don't know the answer to that question.

[00:11:51] Speaker 01:
And I think that's what is problematic for you in terms of getting us to do something about signal without a non-balk hearing.

[00:11:58] Speaker 03:
I understand, Your Honor.

[00:11:59] Speaker 03:
And I think that SCA Hygiene and Petrella speak to that directly, and that they actually go hand in hand with Minerva.

[00:12:05] Speaker 03:
So Minerva says that the court should assume that Congress legislates against prevailing background principles of common law and, in some cases, equity.

[00:12:14] Speaker 03:
Here, as the Supreme Court made clear in se hygiene and Petrella, the background principle is that latches only applies where there is a statutory timing gap, the court could not possibly have been more clear about that.

[00:12:27] Speaker 03:
And that is plain on the face.

[00:12:29] Speaker 03:
of the historic cases applying Lacci's doctrine to patent prosecution.

[00:12:36] Speaker 03:
I mean, they all apply in instances to things like copying for interferences and filing of divisionals for which the statute at the time did not prescribe any sort of timing limitation.

[00:12:47] Speaker 03:
In other words, there was no authorized time to act, and so the courts had to use Lacci's

[00:12:51] Speaker 03:
to borrow a presumptive time limit.

[00:12:54] Speaker 03:
So I mean, that describes pretty much every single one of the historic prosecution-wise case.

[00:12:59] Speaker 03:
So the background principle of law that is relevant under Minerva is exactly the one that was described in SCA Hygiene and Petrola.

[00:13:06] Speaker 03:
which is that prosecution latches cannot apply, both as a doctrinal matter and a separation of powers matter, where Congress has provided a right to act within a certain period of time.

[00:13:18] Speaker 03:
We think Minerva really supports us very strongly on that, particularly the second part of the decision, where the court said, yes, a sign or estoppel is a well-recognized background principle of law.

[00:13:30] Speaker 03:
We accept that.

[00:13:31] Speaker 03:
But you have to apply that doctrine according to its terms.

[00:13:34] Speaker 03:
And so the court cut back this court's decision, broadening the scope of that doctrine beyond what had been historically recognized.

[00:13:41] Speaker 03:
We think the mistake here in Symbol is effectively the same, and SCA Hygen and Petrella tells you how to cut back that doctrine.

[00:13:48] Speaker 03:
In other words, you need that required first step of determining, is there a gap, a timing gap in the statute?

[00:13:55] Speaker 03:
And that's something that Symbol, of course, not only didn't consider,

[00:13:59] Speaker 03:
but affirmatively reject it.

[00:14:02] Speaker 03:
So we're very comfortable with Minerva.

[00:14:03] Speaker 03:
And we think that it actually compels the result.

[00:14:06] Speaker 02:
So we would not be able to overturn the symbol.

[00:14:09] Speaker 02:
You realize that.

[00:14:11] Speaker 03:
Your honor, we believe that under Troy, that only a non-bond court will be able to do that.

[00:14:17] Speaker 03:
The court was very clear in Troy versus Sanson and subsequent cases that where a subsequent Supreme Court case has undercut the reasoning, or adopted a different mode of analysis than a prior panel opinion, then a subsequent panel may reconsider that without going unbonded.

[00:14:35] Speaker 03:
That's what the court did in Troy.

[00:14:36] Speaker 03:
And respectively,

[00:14:38] Speaker 03:
We think that this case is even less of a question than it was in Troy.

[00:14:43] Speaker 03:
Troy was a case that came after.

[00:14:45] Speaker 01:
And I understand your argument, but the problem for you is we wouldn't even do it in SCA, which was much closer to Petrillo than this case is.

[00:14:55] Speaker 01:
So if we weren't going to do it in SCA as a panel, I think you're going to find it very unlikely that we're going to do it here as a panel.

[00:15:01] Speaker 01:
Because prosecution latches is not the same kind of latches that was at issue in both

[00:15:09] Speaker 01:
of Petrillo and SCA.

[00:15:11] Speaker 01:
And those two were really basically the same.

[00:15:14] Speaker 03:
Well, Your Honor, respectfully, two responses to that.

[00:15:17] Speaker 03:
One is, as I noted, the Supreme Court's decision overturning this court's unbacked decision, it rejected the exact same reasoning that the court applied in symbol.

[00:15:26] Speaker 03:
So I mean, that really is kind of on all fours.

[00:15:29] Speaker 03:
And the second thing is, the court has never drawn a distinction in terms of doctrine between litigation latches and prosecution latches.

[00:15:37] Speaker 03:
It's one doctrine.

[00:15:38] Speaker 03:
All of this court's recent modern prosecution latches decisions all draw their standard for latches from AC Aukerman.

[00:15:46] Speaker 03:
In fact, the court's earlier decision in this case drew its standard from Aukerman.

[00:15:51] Speaker 03:
And the only citation of SCI hygiene was to note that it had overruled Aukerman.

[00:15:56] Speaker 03:
So I mean, it's right there on the face of the opinion.

[00:15:58] Speaker 03:
I mean, we're dealing with the same doctrine.

[00:16:01] Speaker 02:
Do you want to address the district court's ruling?

[00:16:05] Speaker 03:
I'm certainly happy to address that if you have any particular questions regarding it, but otherwise we would stand on our briefs.

[00:16:13] Speaker 02:
It's your appeal.

[00:16:14] Speaker 02:
If you have nothing to say then that's okay with us.

[00:16:17] Speaker 03:
All right.

[00:16:19] Speaker 03:
I mean, as I said, I think the mode of analysis here is relatively straightforward, which is simply that SCA Hygiene and Petrella have conclusively rejected and overruled the reasoning of symbol.

[00:16:31] Speaker 03:
This panel has the authority to recognize as much and is bound by those decisions.

[00:16:36] Speaker 03:
And applying the mode of analysis that's required by SCA Hygiene and Petrella is incredibly straightforward and dictates the results in this appeal.

[00:16:45] Speaker 03:
If the court has no further questions, I'll reserve the balance.

[00:16:48] Speaker 02:
I'll give you a couple of minutes more time if you need it because we took up some of your time.

[00:16:53] Speaker 02:
Is that it?

[00:16:55] Speaker 03:
If the court has no further questions at this time, I'll just reserve the balance.

[00:16:58] Speaker 02:
Okay.

[00:16:59] Speaker 03:
Thank you, Your Honor.

[00:17:15] Speaker 02:
Councilor Richards?

[00:17:17] Speaker 02:
Yes, Your Honor.

[00:17:17] Speaker 02:
Okay, you may proceed.

[00:17:19] Speaker 00:
Thank you, Your Honor.

[00:17:23] Speaker 00:
May it please the Court.

[00:17:25] Speaker 00:
This Court's prior decision held that the USPTO had shifted the burden to Mr. Hyatt to overcome the USPTO's evidence of prosecution latches.

[00:17:35] Speaker 00:
On remand, the District Court held that the evidence compelled a singular result, judgment for the USPTO.

[00:17:43] Speaker 00:
On appeal, Mr. Hyatt does not specifically dispute the district court's findings or conclusions.

[00:17:49] Speaker 00:
Accordingly, it is now undisputed that Mr. Hyatt pursued an array of practices which resulted in delay in his applications.

[00:17:57] Speaker 00:
It is undisputed that Mr. Hyatt caused prejudice to the USPTO and the public.

[00:18:03] Speaker 00:
And it is undisputed that Mr. Hyatt's conduct amounted to an abuse.

[00:18:07] Speaker 02:
What's your view on the applicability of SCA hygiene and patrol?

[00:18:13] Speaker 00:
Our view is that SCA hygiene and patella would not apply because

[00:18:20] Speaker 00:
because there is no fixed time limitation on patent examination set out in the 1952 Act.

[00:18:25] Speaker 00:
And I think that's clear by looking at SCA, Hygiene, and Petrola themselves.

[00:18:32] Speaker 00:
They had a fixed, so generally, as Your Honor noted earlier, Congress was presumed to act against a backdrop of the common law and has to speak directly to the common law doctrine if they're going to abrogate it.

[00:18:45] Speaker 00:
and in SCA Hygen and Petrella litigation latches deals with unreasonable delay in filing suit and statutes of limitations speak directly to whether a time period is reasonable before a party files suit.

[00:18:59] Speaker 00:
So here we're dealing with prosecution latches.

[00:19:01] Speaker 00:
This is unreasonable and unexplained delay in patent prosecution that causes prejudice and that puts off the public enjoyment of the invention.

[00:19:10] Speaker 00:
And so that renders this a different doctrine than litigation latches.

[00:19:13] Speaker 00:
Litigation latches

[00:19:15] Speaker 00:
protects a particular party from an unreasonable delay in filing through.

[00:19:19] Speaker 01:
Sure, but all of the actions he's taken in these continuations and whatever, I know, I've seen that document, a fold-out document.

[00:19:28] Speaker 01:
There's a lot going on here.

[00:19:29] Speaker 01:
But none of them were inconsistent with the statutes, were they?

[00:19:34] Speaker 00:
So no, Your Honor, but that question was already resolved in this court's prior decision.

[00:19:38] Speaker 01:
No, I understand.

[00:19:39] Speaker 01:
But we're asking the bigger question here now.

[00:19:41] Speaker 01:
I mean, I think we're bound by signal.

[00:19:43] Speaker 01:
This has got to go on bonk if we're going to reconsider it.

[00:19:45] Speaker 01:
But he's just spent his entire time arguing why, essentially, signal was inconsistent with SCA.

[00:19:52] Speaker 01:
And Petrillon, I want to hear the office's views on that.

[00:19:56] Speaker 01:
And it does seem to me that it's a harder question than SCA, but it's still a question, isn't it?

[00:20:03] Speaker 01:
Do you agree that the proper analysis is that we need to determine whether this common law doctrine was so well established by the 52 Act that it survived the enactment of the 52 Act?

[00:20:17] Speaker 00:
No, Your Honor.

[00:20:18] Speaker 01:
Why not?

[00:20:19] Speaker 01:
Because that's what the Supreme Court did in Minerva with the signer estoppel.

[00:20:22] Speaker 00:
So yes, Your Honor, but well, not exactly, Your Honor.

[00:20:26] Speaker 00:
In Minerva, the Supreme Court first looked at the statute that the party had cited as allegedly abrogating a signer estoppel and determined that that statutory language did not, in fact, address a signer estoppel and that the language, in fact,

[00:20:45] Speaker 00:
The party argued was abrogating a sign or a stoppile.

[00:20:48] Speaker 00:
It coexisted with the Supreme Court decisions that

[00:20:53] Speaker 00:
that recognized a sign or a stoppile.

[00:20:55] Speaker 00:
And so in this particular case with prosecution latches, most of the practices that Mr. Hyatt points to as regulating patent examination similarly coexisted with prosecution latches.

[00:21:08] Speaker 00:
And most of them were statutory at the time that Woodbridge and Webster were decided as well.

[00:21:13] Speaker 00:
Applicant response time was in revised statutes 4894 by 1870.

[00:21:17] Speaker 00:
The time period for paying the issue fee was in revised statutes 4885 by 1870.

[00:21:23] Speaker 00:
and what became the 102B bar was in revised statutes 4886 by 1897.

[00:21:29] Speaker 00:
So when Woodbridge was decided in 1923 and Webster in 1924, those practices were already part of the statutory scheme there.

[00:21:39] Speaker 00:
And so Congress's

[00:21:42] Speaker 00:
carrying forward of those specific practices can't be seen as abrogating prosecution lodges.

[00:21:47] Speaker 00:
The only doctrine that Mr. Hyatt cites that was not codified, that was not statutory at the time, is co-pendency, but that was an existing practice.

[00:21:56] Speaker 00:
It goes back to 1864, Godfrey v. Eames, which this court recognized in Transco, and the purpose of codifying co-pendency in 120 and 121

[00:22:06] Speaker 00:
was simply to recognize the existing procedural rights that applicants have.

[00:22:11] Speaker 00:
So each of the practices that Mr. Hyatt argues abrogated prosecution latches in fact coexisted and were part of the legal landscape when these cases Woodbridge and Webster recognizing prosecution latches were decided.

[00:22:24] Speaker 00:
Now, Mr. Hyatt's response to that is that part of the legal landscape also was that when Congress has prescribed timing, then latches can't apply.

[00:22:32] Speaker 00:
And he cites his source cases for that are Overland Motor and American Bell.

[00:22:37] Speaker 00:
And so Judge Walk, Your Honor, recognized that Overland Motor is not so limited and recognizes that when there is a statute that sets forth timing, there may be other circumstances which nevertheless lead to a finding of latches.

[00:22:51] Speaker 00:
And going back to American Bell, based on Mr. Hyatt's argumentation of American Bell, one might expect that that case looked at whether the applicant had complied with the statute, said he did, and then that was that.

[00:23:03] Speaker 00:
But that's not how that case resolved itself.

[00:23:05] Speaker 00:
The Supreme Court did say about what Mr. Hyatt quotes about complying with a statute, but then it went and looked at who was responsible for the delay.

[00:23:15] Speaker 00:
And it said that if the applicant's conduct has been wrongful, it may and ought to suffer.

[00:23:20] Speaker 00:
that if the applicant is responsible for the delay, notwithstanding the statute, that they still can forfeit their patent.

[00:23:26] Speaker 00:
That's at 167 U.S.

[00:23:27] Speaker 00:
251 and then later says that the applicant can lose its right if the delay was through his inducement.

[00:23:34] Speaker 00:
That's 167 U.S.

[00:23:35] Speaker 00:
263.

[00:23:37] Speaker 00:
So the cases that Mr. Hyatt cites is for this proposition that there can't be latches where there is timing isn't supported.

[00:23:46] Speaker 00:
It goes back all the way to American Bell that you can potentially have latches in those sort of circumstances and the Supreme Court stepped through the government's evidence in that case to see whether and if the applicant was responsible for the delay there.

[00:24:01] Speaker 01:
So you're saying we should read Petrillo and SCA as confined to simply not being able to use latches to evade a congressionally mandated statute of limitations.

[00:24:17] Speaker 01:
That it shouldn't, that kind of principle that when Congress is enacted to set time limitations, shouldn't apply beyond bringing a case in court.

[00:24:30] Speaker 00:
I think that those are certainly the facts of SCA hygiene and patrol.

[00:24:33] Speaker 01:
I know, but that's the question is, are they confined to their facts or is that a general principle?

[00:24:39] Speaker 01:
It seems to me that the general principle is that when Congress has specified a time period for doing something that they're entitled to do, that the court shouldn't impose

[00:24:50] Speaker 01:
another separate equitable, judicially created remedy to alter that time period.

[00:24:55] Speaker 01:
And why is that confined only to statute of limitations to bring an action rather than otherwise time periods for doing something at the agencies?

[00:25:07] Speaker 00:
Well, I think, Your Honor, that part of the reason that I understand Your Honor's point about the general principle there.

[00:25:15] Speaker 00:
But I think part of the reason that those cases turned out the way they did was the specificity of the statutes and how they spoke directly to the litigation latches question.

[00:25:25] Speaker 00:
And so I think as a matter of principle, that can be applied beyond just the facts of the statute of limitations.

[00:25:32] Speaker 01:
So if you have a time period for bringing

[00:25:35] Speaker 01:
for instance, a challenge to an IPR or something like that, or bring an IPR, the courts can't step in and say, well, we can't step in and say, well, even if they missed that time period, there was some equitable reason.

[00:25:49] Speaker 01:
Or even if they met that time period, there was some equitable reason that we think they should be a stop from pursuing that IPR.

[00:25:56] Speaker 01:
Because Congress has set that time period for bringing that administrative action.

[00:26:00] Speaker 01:
That seems like we couldn't interpose latches.

[00:26:03] Speaker 01:
They are to alter the time period, right?

[00:26:06] Speaker 01:
I know you don't want to answer it.

[00:26:07] Speaker 01:
Just assume it's a hypothetical.

[00:26:09] Speaker 01:
I'm not going to hold you to it.

[00:26:10] Speaker 00:
So I think the office would agree that as far as the IPR statute goes, that's correct.

[00:26:16] Speaker 00:
But that's distinguishable in a couple of ways.

[00:26:19] Speaker 01:
Your point here is that what he's referring to aren't specific time periods to do anything.

[00:26:27] Speaker 01:
that there aren't time periods in the statutes for continuations and stuff like that, in the sense that there are an SCA at Petrillo.

[00:26:35] Speaker 01:
And so there's nothing to displace prosecution latches.

[00:26:40] Speaker 00:
Yes, exactly, Your Honor.

[00:26:41] Speaker 00:
And a number of the practices pursued.

[00:26:44] Speaker 00:
I guess first, this court's prior decision in 2021 resolved the question whether simply complying with the statute was sufficient to avoid prosecution latches.

[00:26:53] Speaker 00:
And the court said that it was not.

[00:26:54] Speaker 01:
I mean, the problem with that argument is that's not what we seem to rely on in signal for the reason that latches could go forward.

[00:27:03] Speaker 01:
What we seem to rely on in signal was the exact reasoning that was rejected by SCA, which was it was around prior to the 52 Act, and we see nothing in the 52 Act that displaced it.

[00:27:15] Speaker 01:
And I think that's problematic.

[00:27:17] Speaker 01:
But I think the facts of SCA matter to how that turned out in the sense that... Right, but if that was the argument that prosecution latches was different than litigation latches, as I guess we're calling it,

[00:27:33] Speaker 01:
You would have thought that would have been in signal, but it wasn't.

[00:27:38] Speaker 01:
It was the same precise reasoning that was used in signal to carry forth prosecution latches was the reasoning the Supreme Court rejected in SBA.

[00:27:50] Speaker 00:
No, Your Honor, I don't agree with that.

[00:27:53] Speaker 01:
No, I mean, it's pretty clear, or at least the dissent says that's what they're doing.

[00:27:57] Speaker 01:
They're saying, I mean, I think

[00:28:00] Speaker 01:
Let's just assume that's what it is.

[00:28:01] Speaker 01:
I don't want to get at it We can all read that case, but I didn't see anything in signal that said well This is just there aren't any time periods that could be the basis for latches They're just saying we've had latches since these cases from the 20s.

[00:28:15] Speaker 01:
You know we're going to keep applying it We don't see anything in the 52 Padnak that displaced it in Judge Newman in dissent said

[00:28:22] Speaker 01:
that the Patent Act did displace it.

[00:28:24] Speaker 01:
That's the precise question that was at the heart of SEA, too, and the Supreme Court went the other way on it.

[00:28:29] Speaker 01:
But that turned on different statutes.

[00:28:33] Speaker 01:
I know, but the problem is that maybe I'm not making myself clear.

[00:28:37] Speaker 01:
Neither of the signal case did not turn on the differences in those statutes.

[00:28:41] Speaker 01:
The signal case turned on the fact that it had been around for a long time and nothing in the 52 Act displaced it, not on the specific differences in the statute.

[00:28:51] Speaker 01:
And so to get to the differences in the statute, I think, is a different rationale for finding prosecution lashes is around than the basis that was found at Signal and the basis that was rejected in SCA.

[00:29:11] Speaker 00:
So I think the difference between the statutes that were

[00:29:20] Speaker 00:
I take Your Honor's point about the perceived commonalities.

[00:29:25] Speaker 00:
But what matters, I think, there was that 286 had to be, unless otherwise, provided by law provision, as Your Honor is well aware.

[00:29:34] Speaker 00:
And so that led to the analysis about whether latches could displace the statute of limitations claim for damages.

[00:29:46] Speaker 00:
Although it did have the same general method of analysis about an existing common law doctrine, I mean, that's the method of analysis that the Supreme Court applied in Minerva as well, that the case turned out differently.

[00:29:58] Speaker 01:
Sure, Minerva's pretty helpful for you, I think.

[00:30:00] Speaker 00:
Yes, Your Honor, we agree.

[00:30:02] Speaker 01:
And so I think that- Minerva makes this case very hard because

[00:30:10] Speaker 01:
Otherwise, I think SCA helps them an awful lot.

[00:30:13] Speaker 01:
None of this is going to happen at this panel, but you know, this is a very interesting case and to me it comes down to

[00:30:21] Speaker 01:
to a couple of different questions.

[00:30:23] Speaker 01:
And one of them is, is the time periods that you hear similar enough to the kind of time periods in SCA and Petrillo that LAPTRA shouldn't apply?

[00:30:34] Speaker 01:
And two, how do we look at the basically incorporation by the Patent Act question, which came out differently in the NERVA and SCA?

[00:30:47] Speaker 00:
OK, so to take those questions on.

[00:30:50] Speaker 00:
So whether the, I guess how to approach the difference in whether in the incorporation.

[00:31:01] Speaker 01:
No, I understand.

[00:31:02] Speaker 01:
You made your arguments on the differences.

[00:31:03] Speaker 01:
You don't have to repeat it.

[00:31:04] Speaker 01:
SCA and Petrille are very easy.

[00:31:07] Speaker 01:
They have a time period for bringing a copyright case or a patent case.

[00:31:15] Speaker 01:
The Supreme Court said, well, you can't use the latches to displace that one time period.

[00:31:19] Speaker 01:
The question is, how far does that reasoning extend?

[00:31:23] Speaker 01:
Because here, we have statutes that allow all of the action undertaken by Mr. Hyatt in prosecuting his patents.

[00:31:30] Speaker 01:
He didn't do anything that violated a statute or a statutory time period.

[00:31:34] Speaker 01:
And Congress has said all of those.

[00:31:36] Speaker 01:
So should we allow courts to interpose

[00:31:40] Speaker 01:
an equitable doctrine to alter that.

[00:31:42] Speaker 01:
It's far removed from Petrillo in some ways, in some ways not.

[00:31:47] Speaker 01:
And your argument is it's too different.

[00:31:50] Speaker 00:
Yes, Your Honor, because whereas SCA Hygiene and Petrillo dealt with a statute of limitations for a particular action.

[00:31:57] Speaker 01:
But what's your support for the fact that it can't be extended beyond that?

[00:32:02] Speaker 01:
besides just saying, well, they're different, that this was simpler.

[00:32:06] Speaker 01:
Because the logic behind them seems like it could apply similarly.

[00:32:12] Speaker 01:
Sorry, I take it up a lot of your time.

[00:32:14] Speaker 02:
So do we need to get into this?

[00:32:16] Speaker 02:
Does the law of the case apply here?

[00:32:18] Speaker 00:
Yes, Your Honor.

[00:32:19] Speaker 00:
Our position is that the law of the case applies here.

[00:32:22] Speaker 00:
Your Honor isn't having any questions about that for Mr. Grossman's side.

[00:32:25] Speaker 00:
Do you have any questions?

[00:32:27] Speaker 04:
I want to back you up to the beginning

[00:32:29] Speaker 04:
Judge Hughes second colloquially with you.

[00:32:33] Speaker 04:
Yes.

[00:32:34] Speaker 04:
When he asked a general question about equity as opposed to prosecution latches or when he was talking about the cases he was discussing.

[00:32:47] Speaker 04:
And that is, you're not abandoning equity in those situations.

[00:32:53] Speaker 04:
For example, if the office discovers fraud

[00:32:57] Speaker 04:
it still can apply an applicable remedy.

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

[00:33:02] Speaker 00:
Okay.

[00:33:02] Speaker 00:
Uh, Judge Ray, may I have leave to... Because your answer was yes, and I didn't... I may have misspoke, Your Honor.

[00:33:10] Speaker 02:
Do you have any other questions?

[00:33:12] Speaker 00:
May I have leave to briefly... No, I'm fine.

[00:33:15] Speaker 00:
Okay.

[00:33:16] Speaker 00:
Well, then we respectfully request that this court affirm the judgment of the District Court.

[00:33:20] Speaker 00:
Thank you.

[00:33:26] Speaker 02:
Mr. Grossman, you have a little over two minutes.

[00:33:29] Speaker 03:
Thank you, Your Honor.

[00:33:30] Speaker 03:
I'd like to try and take another run at the issue as to whether or not symbol is binding on the panel.

[00:33:38] Speaker 03:
With respect, the court held in Troy versus Hanson that the issue decided by the Supreme Court cannot be identical.

[00:33:45] Speaker 01:
Honestly, if you want to spend your time on that, you can, but I'd actually be

[00:33:49] Speaker 01:
and more interested in the answers to my two questions about to them about why this is similar enough to the statute of limitations in Petrel and SCA, and how we would apply that same incorporation doctrine that we looked at in Minerva.

[00:34:04] Speaker 01:
Because to me, that's the two questions we have to answer for this case, and whether it's done by the panel decision or a bonk is going to be made by the judges, not anything you're going to say.

[00:34:17] Speaker 03:
Your Honor.

[00:34:17] Speaker 03:
So on the first question.

[00:34:21] Speaker 03:
SCA, Hygiene, and Petrella are very clear that they rest on two points.

[00:34:25] Speaker 03:
One is simply what SCA, Hygiene refers to as the Office of Latches.

[00:34:30] Speaker 03:
And the Office of Latches, in the context of a statutory scheme, is filling timing gaps.

[00:34:35] Speaker 03:
And the second is a separation of powers principle.

[00:34:37] Speaker 03:
And the Court spells this out, that when Congress creates a right and gives somebody the time to exercise that right, the Court is abrogating that right if it applies an equitable doctrine.

[00:34:46] Speaker 01:
So you're saying there is no timing gaps

[00:34:48] Speaker 01:
in the patent statutes covering examination and prosecution for latches to fill.

[00:34:55] Speaker 03:
We're saying that, but we're also saying something that's a little bit different but complementary to that, which is that Symbol fundamentally went wrong by not looking at this in sort of a gap-based way.

[00:35:04] Speaker 03:
And it created this monster of a doctrine that stands astride the Patent Act.

[00:35:08] Speaker 03:
that just usurps every single provision regarding prosecution from timing to questions of patentability.

[00:35:14] Speaker 03:
It's all in the bucket of equity where the statute regulates these things specifically.

[00:35:19] Speaker 03:
I mean, this court effectively recognized that, I think, in symbol two.

[00:35:22] Speaker 03:
It recognized that application of the doctrine vitiates the act.

[00:35:25] Speaker 03:
That is, in fact, what it does.

[00:35:27] Speaker 03:
Um, with respect to the incorporation issue, um, again, I think SCA Hydrogen and Petrol has speak to that because they tell you what the applicable doctrine was.

[00:35:36] Speaker 03:
And so in that respect, it's very much like Minerva where sure, you know, is, is latching is a background principle of law that theoretically might apply, you know, it's out there.

[00:35:45] Speaker 03:
That's something that Congress legislates against, but in this instance, you have to take laches as it comes.

[00:35:50] Speaker 03:
And that doctrine doesn't apply where Congress has said, you've got a right to do something in this particular period of time.

[00:35:56] Speaker 03:
So long as you're timely, you can exercise that right.

[00:35:59] Speaker 03:
In that instance, the doctrine has no application.

[00:36:02] Speaker 03:
And so there would simply be no room for prosecution latches under the statute.

[00:36:07] Speaker 03:
So we thank the court and would ask the court to reverse the district court's judgment regarding lapshees and affirm regarding patentability.

[00:36:14] Speaker 03:
Thank you.

[00:36:16] Speaker 02:
We thank the party for allowing us to take the case under advisement.