INTELLIGENCE

Federal Circuit Updates

Immersion Corp. v. HTC Corp., No. 2015-1574

June 21, 2016

In an appeal from the District of Delaware, the Federal Circuit concluded that a continuation patent application was entitled to the benefit of the filing date of its parent application when the continuation application was filed on the same day that the parent application issued as a patent.Put differently, the Federal Circuit concluded that a continuation application is considered to be copending with the parent application on the day that the parent application issues as a patent.This holding stems from Immersion Corporation’s (“Immersion”) patent-infringement suit HTC Corporation (“HTC”). Some of the patents in suit, as relevant here, claimed priority a chain of applications in which one of the continuation applications in the chain was filed onAugust 6, 2002the same day as the parent application issued as a patent. HTC alleged invalidity based on a PCT patent application in the claimed chain of priority that published onJuly 26, 2001. In support of this argument, HTC argued that the August 6, 2002 continuation application was not entitled to the filing date of the parent application because the continuation was not filed until the day that the parent issued as a patent, and therefore ran afoul of the statutory requirement that a continuing application is only entitled to the benefit of an earlier application’s filing date if filed “before the patenting” of the parent as per 35 U.S.C. § 120. , HTC argued, the patents were not entitled to any filing date earlier than August 6,2002, and the PCT publication was therefore invalidating prior art under pre-AIA 35 U.S.C. § (b). The district court agreed with HTC, concluding that “before the patenting” clearly does not mean “on or before the day of patenting.” The Federal Circuit reversed. In disagreeing with the district court, the Federal Circuit noted that the MPEP has, for approximately fifty years,concluded that a continuation application is copending with the parent application if filed on the same day as the parent issued as a patent. The Federal Circuit also found it important that section120 was enacted in the 1952 Patent Act in order to codify existing continuation-application practice, which permitted continuation applications on the day that the parent issued as a patent.Accordingly, the Federal Circuit concluded that the PCT publication was not prior art against the patents in suit.

 

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