filed against a reference pattern that is expired by its statutory term but the case does not end because there is a patent term extension under section one of the six that starts from the expiration date of the underlying pattern the reference date of the term extension you all got on one fifty six was on a narrow or was only on a product and it was limited to the just a particularly use and therefore wasn't coextensive with the scope  i write about that the right the term extension applies to the patent but then there's provision that provides that it's and forcible with respect to the product that's approved and the uses right and that it was taught in our schools so how do you i mean so those are the two problems i'm having  to how you overcome the district court's conclusion in light of those two factors which i think make this case different from many of those that are previously cited in the thread and your honor i agree that this case is different and sui generous so in a non  filed but if it would of this court surely would not have said the tunnel disclaimer is ineffective let me go on and talk about double so the point here is that he's the issue put it come up in other cases couldn't it in the sense that there's a there's an infringement suit there expired we're done we're not going to go on a distressed double patenting so the effect of refusing to recognize the term of the squire is to create more litigation that's the only real effect i have but i'm sorry this issue could come up in expired so everybody is it resolves litigation i understand but the question is whether you can get out from under the double patenting issue by filing a terminal disclaimer after the expiration of the first patent and then point  we have cases if i recall correctly that you can't follow the terms women unless you have joint ownership of the two patents right that's correct so why isn't that sort of comparable to the situation you shouldn't be able to file a terminal disclaimer if the first patent has expired in the you know law no longer have ownership of it say well the you still have ownership of the patent as to the term i think this is i want those two situations analogous disclaimer if you let's say a four claims in a patent one is invalid you can file a regular disclaimer of that claim during the litigation and the one nine hundred fifty the d o j argue that that creates a chilling effect should be able to do that  rejected that and didn't put a time in limitation and so you can file that disclaimer of a claim that's invalid i was rejected the idea of his sexuality expired if it's analogous effect because it's a claim that's sitting out there th been the enjoyment of the full scope of coverage prior to the terminal disclaimer and the fact that the the scope of the extension granted under section one fifty six  not exactly the same as and is less than the scope of coverage of the the the full set of claims that are in the patent that would normally end in a terminal disclaimer seeking to avoid  coextensive with the extension under section one fifty six means that you've got that that packet of rights that you've already enjoyed and you can see if you can envision a situation where perhaps perhaps there was a party out there that might have done something that refrain from doing something recognising that there was coverage in place that was beyond the scope of the extension coverage  principles that mark apply which are that what you're seeking to do with regard to this defendant in this case in this context as in force the patent term extension right only prospect to believe in merck by the time of the litigation the underlying reference and lends questions directed to what's the what's the policy here and the risk is even if you assume that the terminal disclaimer is retroactive and wipes out any infringement liability which probably in the us but even if you assume it's retroactive that the risk is that competitors would have been deterred in the interim period that me or may not have happened in this particular case but as a matter of policy that question is should you allow turmel and swimmers after exploration in the wris question is whether to give effect to the charles claim and that's the question presented if the answer is no don't give effect to the tunnels claim or let's take the hypothetical person you just talked about that person the consequence for that person now is they have to litigate a final conclusion an appeal the double patenting issue if an option put that person is to file a terminal disclaimer it ends the litigation for that person and irrevocably for the public term of those claims are always good when while let seems to be an argument that there's a countervailing policy consideration but the risks the judge lynn has identified to you were real risks right that the the both patents continue competitors are discouraged and that the of the terminal disclaimer later on doesn't cure the discouragement that's happened here in the earlier period and other discouragement is is something that is not going to be necessarily the subject of any litigation that's simply conduct that may have occurred that we will have no way of knowing but it's it's a as as judge that points out it's a policy question yes you're right it's a policy question if you look at that policy question that six month window is somewhat arbitrary in that the that that theoretical chilling effect could have a car even before the six month window it's the existence of the two paths that presents the chilling effect but you can file a term of this glamourous in issued patents and congress make clear that a department of justice that that the that the that the timing limitation was a point to avoid misleading impressions of the scope of the patent and discouraging the public's use of technology that it's entitled really to use the balance has been struck in favor of disclaimers because they and the litigation in this case for example in fast they talked about the sportswriters talks about a disclaimer avoids the need to talk about exceedingly complex the patenting issues in the situation where a person  outside the term extension i submit that the terminal disclaimer if effective for that person is better than a finding of invalidity because it ends the patent for that person right then and there they don't have to go up on a final decision on a trial court they don't have to come to your honor's for appeal it ends right then and there but milan was the defendant in this case and who we are talking about enforcement at term extension again there is no difference mylan is within the term extension they stipulated to in french and of claim seven they're using this drug the very existence of there and the only existence of the end of the divisional of a divisional that carbs up distinct invention groups groups one in three to five of the original but just to try to focus the consonants they should get to the application forty eight well that was not consistent with the restriction in the sense that you have these compound claims from different groups that were joined together which under the original restriction wasn't permissible so why isn't there a lack of onset because the original restriction requirement was the examiner said restriction of the following inventions listed ten groups so each invention is distinct one from the other of a truck if this if the a twelve application hadn't been submitted to the original examiner who oppose this restriction with army that examiner of said no that's not consistent with my restriction on right i respectfully disagree because the zero eight six your honor had all had metho claims in it that covered the use of the compound claimed in the eight in the first three seven four so the first patent claim to be your argument is your answer judge dependent is that not on our concluding that the restriction we fly met with this small it about the document of the process that lead us to distinguish between those two determinations because if you take if you if you were to say that the selection of one come out of one method was the restriction firemen as opposed to the express language talking about stink invention groups each distinct from the other if you say that that's the restriction requirement then the article would have had to file fifteen patent applications three methods and five compounds and even in that case the so wouldn't have they would still be dividing too severe wasn't a good idea but we're not concerned with that now the question is what was the restriction in would the examiner have allowed these four groups to be join let's assume hypothetically that we conclude that the original examiner would have said not these four groups that are in the eight well patent application are not properly john let's assume that the that he would have that the original examiner had said you got a hit no more than one group in the in a single path let's assume that's the restriction of ok ok and that the a twelve application comes along and groups is that consonant i think it would be because they don't three gives the examiner discretion to allow multiple distinct groups the consonants goes to the stink this it looks at what are the distinct groups and we know that the compounds and meth d understand that i mean he said only one group imposing a restriction requirement only of one group and each pattern in the later pattern has four groups how is that consistent with the restriction because the restriction divides up the original pattern into ten distinct groups each from the other and then eight all three of the m p p gives discretion to allow more than one distinct group now in the three seven forty set one of the last thing is there's never a consonant problem if the second examiner doesn't adhere to the restriction that's what sounds to me like as what you're saying not you know everything fits comfortably together if you have ten distinct groups the examiner sets what that and defines an instruction requirement examiner says in the three seven four one one method and one as part of discretion then they carve up the different distinct groups among the divisional if you're saying that if you saying that the examiner if the examiner exercises discretion later on and allows  different group thing that that none of the last the applicant is entitle to the shelter of section one twenty one no your honor i'm defining the group the way the patent office did with the traditional way of group their inventions and ten groups when it says each group is distinct one from the other there are three statements in the restriction the inventions are the following tao each is distinct one from the other each invention is this thing and then is a statement that the methods are distinct from the compound except the hypothetical ok the restriction is absolutely says that each one of these groups is a separate invention and must be the subject of a separate pack ok that's the initial restriction ok then along comes the applicant in that you know a second application instead of doing what the first examiner said that he had to do that is to separate each group evil lumps four of the groups together is that consonant  i think the answer is it could be the reason being no cases said that putting distinct groups together violates consonants what they're looking at but consonants isn't that hundreds with respect to the restriction that was imposed by the examiner for the room to see what the goods is of voiding a rejection based on the fact that no no no all i did was comply with the restriction requirement and i cannot be penalized for doing that and that's the seems to me that's the the be all and end all with respect to consonants independent of any discretion examiner might have but consonance is looking for whether you tread back into i mean if you look at the b m s the geneva cases there was a group that combined certain subject matter in that group all this not distinct from each other and you claimed that into that group there's been no case that you have a distinct group two distinct groups patents claiming multiple the stink groups and it's been helping valid on that that even if it's a question of law that the ship or might in the first sense of address it however you as a question of what you seek and you asking that we send it back to the district court to decide and questions in the first since and if you do if this court would find that helpful the answer is behringer is trying to claim that they still have the right to perspectively enforce the more narrow section one premiss is the statutory language doesn't limit so what's the answer to that if there is that the statutory language does limit them the policy behind section two fifty three the whole purpose not have a specific time limitation and there's a legislative history in which congress rejected the insertion of the specifics tunning requirement correct yes congress did reject they did amend the statute and reject inserting a specific time limitation however congress never envisioned this type of circumstance that we have here today where patente would have would be asserting rights nearly two years after the underlying pattern had expired and file a terminal disclaimer to it  harm that has transpired between the time when the underlying pattern expired and the leader pattern expired would your position be different in the context of hatch waxman if the if the scope of the extension was the the claims if in the in the patent are the same scope as the coverage that was subject to the extension that scenario would be difficult to envision simply because the harm that was in this case that was that occurred was the extension of the underlying earlier elite six patent so would be difficult to envision a scenario where a later patton would have identical subject matter that could be policy matter in a in a way the extension it would not have affected any parties other than the parties affected directly by the not just parkinsonian as as claimed in the trial patent but also elevated blood pressure schizophrenia and depression so by the use or by the extension the improper double pending even if the scope were the same between the top and the one thirty six extension the public would still be precluded from using those compounds to practice the inventions of the elite six patent meaning they would still not be able to use those compounds for a non approved use such of which is pr use for parkinson's disease you know its expand still includes elevated blood pressure schizophrenia and depression so the public would be harmed because they would still be prevented from using it's it's the inventions in the zero eight six underlying pat one move to the one twenty one issue on you seem to be the district court seem to suggest that well if we read the statute as it's written i go the other way but i'm persuaded by my reading of ticked that all circuit case law treats the read is that you don't think this particular path would be covered because it wasn't as a result that's correct your honor it was not as a result of any divisional application it was a and this is the only case that has ever presented a the issue of whether or not there was a restriction in a grandparent application and then had the double patenting between the parent and the child without an indirect intervening restriction requirement well it seems what are we what difference would it make if if there was a three way restriction requirement and as a result there were two separate divisional applications filed and the original application was restricted to one of the three groups a compared with a district in the claims in the first case to one group and then filing a division attempting to get the other two groups facing perhaps a repeat rejection and then following another division don't disagree with judge lynn's question that you could file a when child application that would be the result of the description that would get the earlier filing date under one point want to understand your record in please tell me if i'm mistaken your argument is that when the o e d sigs patton was filed you would normally have expected the eight twelve or at least parts of the wealth to be filed at the same time to be joined with that in that the separated they separated the the composition points out from the utility planes and that that means that the the leader filing of the wel million children great great grandchildren whatever as long as the the those applications were far as the result of the restriction requirement rather than for some other reason and also that there were  put them into i don't later ok shalane understand that you made the argument your brief why we care necessarily about what one of the motivations would have been i mean i don't see the statute says as a result this doesn't say as the only as one result so i don't understand what the you're right or wrong on the motivation on the other the only patent why that affects how we would apply one twenty one in this instance the motivation goes toward whether or not the restriction carry through and it's it's probably more relevant in the in the country in the context of consonance but the fact is that it was it's it's it can read the prosecution history which has to be instructive on whether or not the restriction requirement carry through needs to carry through three all three applications so if the intolerance really on the eighty six right even notwithstanding that in the eighty six patent they didn't follow you know as we talk with the other side you can the argument is whether or not the restriction requirement consisted of one part or two parts central right some are saying that and in the eighty six patent the examiner obviously applied the restriction consistent with what your colleagues because it didn't match the second part requirement he did put in a double patenting rejection and being fairly beano compounds which were selected for the parent application where then removed but there was no there's no reference in the eyes any of the patent prosecution histories are the elite six paten anything about consonance or one twenty one i mean that still get the benefit of one twenty one if if it had been the result of the destruction of the farm and there been concepts we don't care what the examiner said about  if the restriction requirement had carried through your not taking the position that it would not apply to rand child application this is a matter of principle i be back to consonants and whether or not the claims were filed in consonance with that restriction requirement and let's assume that there was consonants and you'll have no problem with that correct there can be a scenario where a parent can be filed like you just you know as you just set forth untypically how these cases wind up is there's cousins patton's who are who are competing against one another so it's rare for them to be in the same chain and also to have a double patenting violation because typically if you're there would always be human that's the that's the that's the bargain with section one twenty one is that you get the earlier priority date as well as the time to prosecute the patent but part of the bargain is you have to meet mode b as a result of requirement and the consonance requirement right the claims were what the claims were appended maybe they were amended during prosecution the owens expand application actually added i think someone of thirty or forty claims based on the four claims that were in the three seven four but did expand them in the prosecution history you'll see reference to the fact that panel is not your argument though was the reason and it doesn't need consonants was because it didn't meet the second part of the restriction requirement which was the example the first exam there's discussion of how the various groups  and we would argue that the and of course in the restriction requirement itself you have the ten groups that were separated but you also had the examiner state as part of the restriction that you must elect either one of the compound groups and one of the methods of treating groups or a process claimed and then in this case we would you know to separate out the partial you want us to decide this case in a way that would also require that we say that the elected portions of the claim and they only then amended the claims once there was a rejection by the examiner and that we're going to find out i mean why are we looking just to what many tried to do as opposed to what was done whether or not it's consistent with requirement i don't understand is the examiner didn't impose the restriction requirement again and second of all that the that the consonants was in the application the cases looked to if the application was consonant with the restriction requirement it's just a matter of hard reading differently leeks state in the extent of the restriction requirement white i think the prosecution history is very clear in judge farnan as well as when he reviewed it that the restriction requirement was not applied by the second examiner the second examiner there was there was inconsistent it was inconsistent was inconsistent right and the judge farming never did reach the distance mean don't you think there's a basis upon which we would be better served by having the district court in the first instance saw all of those issues regarding compliments you know your honors a matter of fact because one twenty one section one twenty one is reviewed to novo and all of the evidence that judge farnham would look at is also in your hands in the record judge consonants that was not are already presented by the parties in their briefing here sets for the restriction to one of ten inventions a five seven six the examiner says there are distinct each from the other the examiner the court found it a seven that the restriction requirement was this ten groups violent coun notice letter a three eight six five characterized the restriction requirement as the ten groups the next piece is an election for that the threesome for pick one and want if the court construes it that way which is the way milan did in the notice letter and the court did in the opinion then you don't have to reach this issue about an m p being and which is a title the deference is under this court's precedent being in conflict with some of their friends and this court's precedent the court said it's guidance i'm sorry i don't have the  and i believe they cite the case law and they purport to describe consonance but i think the case law on confidence when you look at the case long since the concern of confidence is when you have a group of of one subject matter that within that group is is not distinct one from the other and you split that into two paths but if you have two patents claiming distinct subject matter that's what every patent prosecutor does and i would submit that your honor if you look at the violent notice letter they said the restriction was that the ten groups the court found that the restriction was the ten groups the prosecutor clearly thought it was the ten groups and if you would find that an election for one patent is actually the group's then and then that means that in this case they would have been able to pat all their inventions because they would have put in the first patent compound in a group method and the second patent would have tried to claim a method and they would be argued violated the restriction and i ask your ours to look at page a to seventy nine which is or the zero seven zero eight six methods and complex because because it was a legitimate way to do the restriction harm so we would be in a box that is hopeless if you would have taken election and say that that's a restriction this is very classic language that appears in patent prosecution is treason and pfizer and the m s in in geneva if you look at those cases the group included both method and compound and they were struggling to find some restriction that actually separated them at the sting groups in geneva they were arguing that it was an interview in b m s there was a second restriction that actually combine in this instance same group this is a very clean prosecution that we have ten groups milan again in the notice  the problem we never sort of passed the problem so i think i think to say that an election is the restriction in the face of the expressed language here would really send into disarray how you interpret restrictions and i don't think it's necessary in this case and if i could just quickly ask you my time zone almost up on the term the term extension issue with the term of this claim of looks at a seven nine two seven you can see the department of justice there talking about this theoretical chilling effect in one nine hundred fifty two congress different from that is that it has to be done before one point in time which is the is the expiration which that was not the same as the amendment right and your honor i agree that it's not i that identity but i'm going deeper than that what i'm saying is that this is a couple  rationales being offered for denying it in this case mileage within the term extension so none of this applies to my island but i'm going deeper than that i'm saying the chilling effect theory applies to regular disclaimers and congress took out a timing limitation for that and i'm