Continuation Application Filed on Same Day Parent Issues Satisfies § 120 Requirement That Continuation Be Filed Before the Patenting of Parent
By Donald Zuhn --
Last week, in Immersion Corp. v. HTC Corp., the Federal Circuit reversed the decision of the District Court for the District of Delaware that U.S. Patent No. 7,148,875 ("the '875 patent"), assigned to Immersion Corp. ("Immersion"), was not "filed before the patenting" of Immersion's U.S. Patent No. 6,429,846 ("the '846 patent") within the meaning of 35 U.S.C. § 120, because the '875 patent application was filed on the same day that the '846 patent issued.
Because Immersion asserted neither the '875 patent nor the '846 patent against HTC Corp. and HTC America, Inc. ("HTC"), a brief review of the relationship of the '875 and '846 patents to the asserted patents would be helpful. On January 19, 2000, Immersion filed U.S. Application No. 09/487,737 ("the '737 application"), which issued as the '846 patent on August 6, 2002. On the same day that the '846 patent issued, Immersion filed U.S. Application No. 10/213,940 ("the '940 application"), which claims the benefit of the '737 application and five earlier-filed applications, and which eventually issued as the '875 patent. Immersion subsequently filed three continuation applications that issued as U.S. Patent Nos. 8,031,181 ("the '181 patent"); 7,982,720 ("the '720 patent"); and 8,059,105 ("the '105 patent"). The '720, '181, and '105 patents claim the benefit of the '940 application through one of two later-filed continuation applications.
In 2012, Immersion filed suit against HTC for infringement of the '720, '181, and '105 patents. HTC moved for summary judgment of invalidity under 35 U.S.C. § 102(b) in view of Immersion's International Publication No. WO 2001/54109, which published on July 26, 2001, and which corresponds to International Application No. PCT/US01/01486, which claims the benefit of and has a written description that is materially identical to the '737 application. In moving for summary judgment, HTC alleged that the '720, '181, and '105 patents were not entitled to the benefit of the '737 application's filing date because the '940 application was not "filed before the patenting" of the '846 patent within the meaning of 35 U.S.C. § 120, and therefore, that WO 2001/54109 disclosed the subject matter of the asserted claims more than a year before the effective filing date of the asserted patents.
The relevant portion of § 120 states that:
An application for patent for an invention [adequately] disclosed . . . in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application . . . [emphasis added].
In an opinion by Judge Taranto, joined by Chief Judge Prost and Judge Linn, the Federal Circuit notes that the question is "whether . . . the continuing application has to be filed at least one day before the earlier application is patented, or whether an application may be 'filed before the patenting' of the earlier application when both legal acts, filing and patenting, occur on the same day" (emphasis in original). Reversing the District Court's determination of invalidity, the panel adopts the latter position, pointing out that while "[t]he statutory language [of § 120] does not compel, though it certainly could support, adoption of a day as the unit of time for deciding if filing is 'before' patenting[,] . . . history is decisive in permitting the same-day-continuation result, under which, using units of time of less than a day, a 'filing' is deemed to occur before 'patenting.'" In support of its decision, the panel notes that the Supreme Court approved same-day continuations in 1863 and that the 1952 Patent Act, which first introduced § 120, codified existing continuation practices. The panel also notes that:
[S]ame-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century, which has plausibly engendered large-scale reliance and which reflects the agency's procedural authority to define when the legal acts of "filing" and "patenting" will be deemed to occur, relative to each other, during a day.
The panel explains that the language of § 120 "does not by its terms answer the question whether a later-filed application can claim the same filing date as an earlier-filed application when the later one is filed on the day of the earlier one's patenting" because "that language does not say that the unit of time is a day, as opposed to some smaller unit." HTC's argument was based on a construction of § 120 that depends on "date-level granularity" – i.e., that in determining whether a continuation application has been filed before the patenting of a parent, the "before" measurement must be made in units no smaller than a day. However, as the panel points out, HTC's construction -- asserting that "'[b]efore' a statutory deadline means before that date, not on or before that date" (emphasis in original) -- is "at best question-begging, where the statutory language, as with the phrase at issue here, does not actually speak in terms of days or dates."
Looking beyond the relevant language of § 120, the panel notes that the day-as-unit meaning put forth by HTC "might . . . be the most natural one to adopt—the one that would fit best with the statute as a whole—if the statute were new and without history." And that history, the panel states "is so weighty as to be determinative." That history begins with the Supreme Court's decision in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864), which the panel indicates established the basis for same-day continuations for priority-date purposes long before Congress enacted § 120. In Godfrey, the Court held that an application filed on the same day as an earlier-filed application was withdrawn and the earlier-filed application were "to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law," and therefore, that the later-filed application was entitled to the priority date of the earlier-filed application.
The opinion notes that other federal courts and the Patent Office followed Godfrey's rule in the decades following the Supreme Court's decision. The opinion also notes that "[n]one of the legislative history or contemporaneous commentary [for § 120] indicates an intent to alter Godfrey's long-established result approving same-day continuations for priority-date purposes," and further, that every edition of the MPEP since 1961 has "specifically notified the public of the agency practice concerning same-day filing and patenting: 'If the first application issues as a patent, it is sufficient for the second application to be copending with it if the second application is filed on the same day or before the patenting of the first application" (emphasis in opinion). In further support of its construction, the panel points out that "[t]he Supreme Court has long recognized that a 'longstanding administrative construction,' at least one on which reliance has been placed, provides a powerful reason for interpreting a statute to support the construction," citing Zenith Radio Corp. v. United States, 437 U.S. 443, 457–58 (1978).
The opinion concludes that:
[T]he repeated, consistent pre-1952 and post-1952 judicial and agency interpretations, in this area of evident public reliance, provide a powerful reason to read section 120 to preserve, not upset, the established position. And the conclusion is reinforced by the fact that Congress has done nothing to disapprove of this clearly articulated position despite having amended section 120 several times since its first enactment in 1952.
With respect to the Patent Office's same-day-continuation policy, the Office's position is "essentially [a] procedural one establishing when the agency will consider an input into its process (the legal act of 'filing') and an output of its process (the legal act of 'patenting') to occur relative to each other—neither one being a precisely identifiable self-defining physical act, but a legally defined event." As a result, the Federal Circuit reversed the decision of the District Court, and remanded the case.
Immersion Corp. v. HTC Corp. (Fed. Cir. 2016)
Panel: Chief Judge Prost and Circuit Judges Linn and Taranto
Opinion by Circuit Judge Taranto