patent application it was not permitted to use that to obtain a time wise extension of what it already had which is a patent two thousand and ten percent it also could not go beyond what roche's original specification disclosed so for both reasons the district one for a little bit absolutely and so you're right judge o'malley that the district court made a bunch of alternative conclusions but we submit to you that each of those is a legal conclusion of the district court did not i can't insulate that by calling it factual findings for these rights be happy to judge right now because what we do think that that has a central point and let me just begin by saying that that too is a legal question as as this court has said in each of its all substantial rights cases starting with the vocal and that's a consider i don't think so for several reasons your honor so you've course you're right that the this court has referred to the parties intent but actually in the st case in which the court did that it was alluding back to contract cases going back a long way but not to this kind of contract like this one whereas all i think all of this court's cases starting with locale when it has looked at the parties intent it's been dealing with an agreement between sophisticated parties and it has looked only to the contract itself because the contract is the best evidence of the parties inten especially so here if you look at paragraph eleven point one two of the agreement the last part of the agreement which recites as sophisticated parties generally do that this that the agreement is the entire agreement between the parties it's all written down governed by delaware  already we have a body of law that that said to yourself in full so this case so the on the question of what did the parties agree to what was transferred what was retained you would look to delaware law and interpret in the contract but we think you it really is just a pure question of law because the contract itself says these rights are retained these rights are transferred on the question whether that's enough to transfer all substantial rights that's a question of federal law that this i this court applying the term patente in the patent act has interpreted as a legal matter and that is really why we're asking this court to a disease that's intense think that the test for what we now know it simply to be whether or not you qualify under the statute as opposed to standing would we want to introduce this incredibly additional complex inquiry into whether the patent owner here really has common ownership with another set of patents when they've structured some kind of licensing arrangement so let me answer but both of your questions together i because what we're asking the court to apply is a well recognized test for determining what is a score to set in you know half a dozen cases who is the affective patent after parties engage in a transaction like this because you have to tell you the owner if ownership would be governed by state law right potentially but for but with a term that we're asking you to look at in the statute right so if you look for example at the or application that's not at the state and so what this court said in long and i think long is particular significant because i take your point judge jenna about there are some difficulties with applying this test but the other side is proposing you know the test the other side is proposing has already been rejected by this court in longer because it would rule out any test that has been reject the time of invention test right exactly the idea that if at the moment of invention even if it's going to be assigned to your employer and you know as a because we might not like either test that you guys propose doesn't mean that we think that that we have to choose between one of the other i don't i don't think take that point judge o'malley but i do think that going to a test that is number one this court's longstanding and and i think now well developed task for deciding who is the effective patente makes perfect sense when you are deciding who is the patent owner for purposes of obviousness type of a patent and that is  precisely because it is an equitable doctrine it makes sense to look at substance and not labels which is exactly what starting with the supreme court's decision in waterman the it's also channel rights test does so that's that's one way in which it's entirely consistent with the the commercial exploitation of the invention and in force the patent to the extent of the exclusion of others it makes eminent sense to just to clarify it for you your position is we should whole hawg transport our body of law  other possible i don't know sensitivities or different sensitivities that we would have in a different context the context here of whether to apply obviousness typed up about things that militate against just doing it a mirror in the patent application during prosecution right so that so the recipient had the ability to control what the claims were done say had the opportunity to control to some degree the timing of prosecution yes and then s i thought that you were playing a little more conservative that you weren't same you should whole hog transport this analysis you were saying were merely that at least where one of the rights transferred is the right to prosecute happens this analysis that ought to inform and ultimately drive the inquiry are you now saying something broader no we think that what you just said judge or malli i is basically all the court would need to decide in this case to decide that we're right that also potential rights were transferred including the right to prosecute at a time when the recipient was able to actually use that right control prosecution and get claims that the recipient itself was able to author and then of course have the opportunity if it wanted to to cure the e p problem by filing a terminal disclaimer but did not do site with respect to the substantial rights then what do you make of  to the reserve right to sue because there's ten thousand one hundred and eighty day waiting period and during that time immunex has the sole right to as three five of the agreement says to rectify the infringement by granting a license or to later and explain what actually happened and what was the pivot point and speed play and there and we said enough or demand that the real what really mattered was after that lawsuit confused immunex from from granting a sub license to a defendant after roche's initiated that lawsuit then there's the fact that and here is outside of the fact pattern given how we understand speed play throughout for the man in my missing something so i'm not sure i agree with your characterization judge stan i mean i so i certainly agree that what was doing the work in the man was the royalty the obligation to pass through royalties from the that's what the court said distinguish the case from screenplay and there's no such obligation here the immunex has the same ability to grant royalty free sub licenses and even e even if that right to issue that sub license at any point in time after the agreement was signed you mean ex has the right to issue a sub license at any time you so whether it was inside that one hundred and eighty day window or before the one hundred and one but my point is they always have that right but once rose filed the lawsuit and compliance with the agreement that it relaxes blocked well that's the other side's argument when we don't agree with that but we also don't think that the court needs to answer that question and that's why i'm diligence and about really who was at fault here mean we got some pretty egregious conduct out of the p t o on this right losing the file admitting that they hadn't even done anything which has to apply and specifically the conclusion to be drawn from the dates in the what happened say underlying facts sure so what happened on what day it's just that's fine constructions a legal as long as there's not an underlying factual yes that's right and so here what happened is a matter of historical fact that's established you know i don't think is disputed but what conclusions you draw about who to attribute fault to that we think under ember and all of this test cases which i should say are really all come almost all come out as one way to test cases that is a legal conclusion and so the and the as i just alluded to this court has always said that the two a test is a very narrow exception that only applies when the responsible is distinguishable from the facts here i mean it makes me a little nervous to say that anyone who just asked of normal extensions by definition you're at fault i take their point joe malley so let me just begin by saying we're not relying on just on normal extensions here not in re m or talks about extensions as one factor to look at but this is far beyond just normal extensions because most fundamentally what you have here is the  made to the application in deciding who caused what period of delay we're certainly not saying that the p t o did not cause any portion of the delay but the question that you are asking is did the nd patent issue after the st patent and so  are two patents the largest delta is about a little under thirteen months so did the outlook and cause at least thirteen months of delay and both because of the change in the application and because of their failure to respond to o notices saying that certain claims were allowable and because of time that they took during prosecution extension after extension all of that adds up to you can't say that the p t o was solely responsible for the delay and solely and it's the roche patents that were the st five but these are both pretty gap patents right and so the term is seventeen years from issuance and as this court has said you look at the issue and state and deciding what's in a preference patent in that case yes but i'm just trying to understand could the patentee have you know one of the earlier applications of that same that same patent he had prosecuted have claimed the same invention and so what was their opportunity to do so and so here the answer is yes the that they did have an opportunity to do ever been held to be then we have a somewhat bizarre question whether the six and i know even covers a tad right we do have that question which of course is just a matter of plain construction and you think that just or got that wrong if you look at claim two and claim five which is what the other side says was the basis for its having labeled its own five billion dollars product with this patent for a long time they said well that that was just claim too and claim five for example that think two to five is a method of treating psoriasis providing for certain clinical results and so on and then the you mention the jacobs pan which is actually what i wanted to talk about before i get to the broader as as the plain language indicates and as the specification indicates it requires unmodified constant domains and that's not a pen or step either just record also found that he can or step would not have been obvious in light of that claim properly construed and they just it doesn't apply at all now let's go let's go back to the thing so you can see that if if we find all the way through that the district court was wrong treatment using a compound doesn't tell you anything at all about how to produce that compound they don't make any argument if you look at their briefs there is no argument that somehow the five to two claims to methods of producing  issue right well the district court found that the two a test apply so so correct although there is a there is a footnote i don't have the right in front of me but i was a footnote in that part of the district court's discussion  where the court notes that the same issues and arguments would apply under the one way test i don't want to i think it might be going a little too far to say that she was holding that but she did seem to think that you know this the analysis might well be the same undergoing tests now the result as i was saying on the on the five dollars to two dollars there's there's nothing in a method of treatment claim that tells you anything at all about how to produce the compound and even ask to the compound claim if general foods is still good law and i have no reason to think it's not it says you have to look at the claims for odp purposes in their entirety you can't just pick out you know one step of a claim process or one component of a of an emperor at us or compound claim and say oh well this claim this later claim would have been obvious in light of that one component and in general foods the court even said even where that one component describes the essence of the later claimed invention so we think under the general foods approach to odp even the the the one a two compound claims are not obvious in light of the the finke method of treatment plan so if let me go back to the threshold ownership questions there really sanders is really asking the court to make some pretty surprising new law here the st of all the statutory basis for all of this is not the statute that refers to patent cheese it's section one hundred and one dollars which refers to one who invents or discovers so that's the basis for our position that the correct ownership cast is entire the entire ownership of oath at the time of invention because that links it back to the statutory foundation jack that well i don't think you did your honor because in law he was cited in congress amended one hundred and three dollars to provide for the exclusion of prior art of references that were commonly owned at the time of invention even if they had different inventors to congress in the legislative history three and one us received one but i don't see why that after the fact tail should now wag the dog and how we understand obviousness double patterning which it and the existence of decades when it comes to countering common ownership with different entities well i think that i don't i don't know that it's the tail wagging the dog but i think coming only p is obviously a doctrine that's evolved over the years and what we've got with the nine hundred and eighty four dollars amendments in the legislative history ownership and you've got the and you normally you would declare an interference which was the patent office practice at the time but they couldn't because there was no adversity since there was common ownership and the patent office basically said look to the the common owner and said well you need to elect you tell us which is st and that's the one that's going to issue so that was actually a different situation and the law changed quite a bit since then so d you think that it would be  some independent venter invented something and then the next day sold that to a big company like in that and now immunex owns the rights i've just been created the day before and that wouldn't constitute common ownership for possible with respect to d some of immunex as patent portfolio  dollars c safe harbor won't apply because there was not common ownership at the time of invention so that's going to be the price beat the earliest invention is going to preclude the others assuming that they're not patently but i don't think we've ever said that it's an either or proposition no those are getting you know safe harbor or you know or and then all only then will it be applied i think we've ever said no i don't think you've ever said that i don't think the issues ever been squarely presented to the court so you have it not a couple of them are mine so the let me talk about all substantial rights then now that's never been applied in the odp context and there are good reasons for that one is that it's not doesn't really deal with who owns a patent for odp or any other purposes it's are the right parties before the court so that the defendant doesn't have to worry about a series of suits from people claiming various on  rights but let's just assume it's not an assumption odp is all about trying to prevent mr games and you know really expanding patent term and controlling exclusivity over something that really d should be dedicated to the public and so d it's an equitable doctrine it's an ethical judgment and now we can imagine there's all kinds of scenarios where parties will structure deals in a way that gives a nd party everything but technical ownership and and it seems that that would be the sort of thing that he would want to police against to block a party roving policy based judgement to go around looking at patents that you may or may not think are appropriate so that's point one dollar is equitable judgments are typically made at the st instance at the district court level the so why aren't the factors at least informative if not determined well i'm not sure that the all substantial rights test is actually trying to decide who is even sufficiently the owner to bring a pat about even assuming that you apply it here why sandoz fail to make the case that immunex received all substantial rights from roche and judge chen i want to talk a little bit about the point you made about alfred e man and its reading of speed play it's actually a stronger it's stronger in support of the district court's decision even then it seemed case which had the st right to sue could sue and settle immediately for nothing without any approved without any requirement for approval from the license or and notwithstanding that the back up right to sue the nd right to sue was still a i'm sorry because of the past no but there was don't know because that and that that's the important point they could sue they could sue and some offer nothing they didn't even have there didn't have to be any royalties they could just give them a release and  one of them i think judge a male you mentioned the intent question and all of the court's cases under on the all substantial rights case mention intent as a separate element of the analysis it's true that in  the intent of this agreement was to provide a license not an assignment so i'm not suggesting that that if everything else pointed to an assignment i'm not suggesting that testimony would be enough to override it but it is part of the analysis and there's no challenge at all to those findings by the district court the court found immunex witness credible and specifically found that the intent was for a license and the agreement confirms that important they they wanted them to be a party to any litigation so that they would participate as a party they also wanted them to beak to continue to be the owner because of continued patent office procedures and then you know they wanted to be subject to the duty to be candid with the patent office etc and that the district court heard that testimony and found it credible now what about that one feature of the agreement where immunex retains the right to just get it out right well here's the thing be the accordion satisfaction essentially what immunex bought was an option to get an assignment that was part of of the eighty two million dollars that they paid for the accord and satisfaction the fifty thousand dollars if you can think of events in in law school terms as the peppercorn the additional consideration to support that additional staff of an assignment it was not a valuation in any sense by either side of what what the assignment would be worth it was simply to provide the necessary contractual consideration to so there wouldn't be some technical problem later if they requested  for the assignment now the assignment point raises another issue and this is very important under this court's all substantial rights jurisprudence roche can block any assignment by immunex of its rights under the ownership and if you don't have the right to transfer you're not the owner immunex does not have the right to transfer and now that's in contrast to why if which was you know involved in the non north america patents that were at issue in the well that's you know that's my point your honor i'm that's why they can transfer because they got well exactly exactly and immunex can transfer because they didn't get it that's really the point so you've got you've got that you've got the nd right to sue which we think under  a clear example of that so the fact that there that the st right to sue might be exercised in a way that will mean that the nd right to sue never comes into being well that's just inherent in for non clinical research purposes sandoz be little is that right but it was important enough to roche that they insisted on it and it was or it was a right that immunex believe they wanted to keep because they wanted the concern was that roche at the transaction as a whole and there are a bunch of reasons that this is not an assignment it is just a license and that's one of them and again another example of that is the provision dealing with what happens if roche goes into bankruptcy a provision that would you would need at all if this had been a transfer of these patents to immunex rather than just a license that provision only makes sense if this was a license so for of right every a variety of reasons we don't think that the all substantial rights test is the right test but if the court applies it we think as the district court did you come out saying this was a license that was this was not an assignment and there is not the required something i wanted to address it reminds me of in re basil where in that particular case the applicant waited nine years before introducing claims that resembled the claims that ultimately sought here i suddenly introduced p seventy five well that's just not right st the original claims in the original application would have covered the tanner said they covered fusions of a and got the language here includes includes p fifty five as well seventy five and a lot of other sure sure but i'm not one but my point is that that this notion that covering piece seventy five dollars fusions was a creation of immunex is just it's it isn't true in and four way before immunex was on the scene the patent office issued a restriction requirement between p fifty five in piece seventy five constructs so again the patent office right from the beginning saw that the don't know she was focusing one hundred and twenty extension two thousand and twelve well i don't know that she was focused on that because i think when she was talking about five years with no action and losing the file and all that that actually spanned the entire period it wasn't i don't think it was just focused on that you know post two thousand and five period so it was rich she was describing the prosecution in general so this is this notion that you know somehow immunex arrived on the scene and all of a sudden these claims are transformed it's just it's not accurate and i just make one other quick point on that in nine thousand and ninety eight immunex having seen the european at application which stem from the same priority application saw these applications that had nothing to do with the counter step voluntarily paid millions of dollars for a license that it apparently didn't need i guess what the scheme of then later we'll have this other transaction will get control and then we can really  repurpose which is the term that's used often and sandoz is brief repurpose is to cover a carrier step it is just it's inconsistent with the history it's inconsistent with the district court's findings and we respectfully submit the decision should be affirmed in all respects thank you it's enough that there is just brought out with her question it could be transferred the day after invention and eat and if the agreement is structured in such a way that even the payment of a peppercorn leaves some right in that this court should apply to prevent exactly that kind of unjustified time wise extension so on the test the both the legislative history of the eighty four dollars statute and the eighty four dollars statute itself are discussed in and what is the legislative history say both the senate report and congressman kasem are the house chairman and referred to odp being applied to commonly owned applications commonly owned applications not this moment of invention test  it stands to reason that there doesn't have to be the same test for an exception to prior art which should be an arrow exception versus an exception to obviousness of double padding which would allow you to get an unjustified time wise extension we just talk about a little bit about the rights that each party got out of out of this agreement because it's certainly true that roche remains a retained some rights but our point is and under the case law what matters is they were substantial rights and in particular on the noncommercial and the change in the application so the original claim in this in this application to the extent that it talked about p seventy five dollars it was the figure for sequence p seventy five and roche said over and over again to the patent office we're not trying to billion dollars invention with it and they have had the opportunity to enjoy a full term if the court has no further questions i just want to close by saying that we appreciate the court hearing this appeal on an expedited basis sanders has approval