Thank Godfrey for Small Favors: Federal Circuit Upholds Continuation Filing Deadline in Immersion Corp. v. HTC Corp.
On June 21, the Federal Circuit held that a patent application filed as a continuation of an earlier application may be filed on the same day that the parent application issues and claim the benefit of that earlier application’s filing date. The ruling, which reversed and remanded the decision of the District Court for the District of Delaware, upheld a decades-long practice of the Patent Office and rescued over 10,000 patents from invalidation.
Immersion owns U.S. Pat. Nos. 6,429,846 and 7,148,875; the two patents share the same written description. The application for the ‘846 patent was filed on January 19, 2000, and the patent issued on August 6, 2002. The application for the ‘875 patent was filed on August 6, 2002, i.e., the same day that the ‘846 patent issued. Immersion was afforded a January 19, 2000 priority date for the ‘875 patent under 35 U.S.C. § 120, which provides that a continuation filed “before the patenting, abandonment, or termination of proceedings on the first application” may claim the benefit of the earlier filing date.
In 2012, Immersion sued HTC Corp. for infringement of several patents, the applications for which were continuations of the ‘875 patent. HTC contended that the claims of these patents were invalid, contesting Immersion’s claim of an August 2000 priority date. At issue: Does a continuation filed on the same day as the issue date of its parent application satisfy 35 U.S.C. § 120, or does the statute require the continuation to be filed a day or more earlier? The Delaware district court concluded the latter and decided in favor of HTC. Immersion appealed.
The Federal Circuit reversed. “Section 120’s language 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.” Judge Taranto, joined by Chief Judge Prost and Judge Linn, rejected the lower court’s rationale, stating that the statute “does not say that the unit of time is a day, as opposed to some smaller unit. As far as that language goes, filing can precede patenting on the same day.” Concluding that “[w]e must therefore widen the lens to look beyond the specific phrase at issue,” the court relied on case law and historical precedent to justify current USPTO practice. Interestingly, the court unearthed an 1864 Supreme Court decision, Godfrey v. Eames, 68 U.S. 317 (1864), for the origin of same-day continuations and the idea of copendency. The court opined that the intent of the drafters of the 1952 Patent Act was to codify the longstanding practice of following Godfrey’s rule:
“Not surprisingly, then, the agency soon went beyond the beyond the term “copending” (with its Godfrey-based meaning) to be more explicit about the same-day situation. Although an early edition of the Manual of Patent Examining Procedure defined “copending” by simply echoing section 120’s language, MPEP § 201.11 (2d ed. 1953), every later edition of the MPEP, beginning in 1961, 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 (court’s emphasis) with it if the second application is filed on the same day or before (court’s emphasis) the patenting of the first application.” MPEP § 201.11 (3d ed. 1961).
Overall, Judge Taranto’s opinion shows that the court “felt the pull” of HTC’s argument. He explains HTC’s view that neither of two events happening on the same day is easily viewed as happening “before” the other event. HTC sensibly argued that “before” cannot mean the same thing as “on or before.” However, although Judge Taranto acknowledged the logic of HTC’s argument, he opined that the language alone did not “resolve the critical unit-of time issue”:
“The particular language of section 120 that is at issue here can bear a day-as-unit meaning. That meaning 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, whether pre-enactment or post-enactment. But that is not the posture in which this case is presented.”
According to the court, the passage of time, reliance interests of patentees, and the need for the USPTO to control procedural aspects of patent procurement demanded an outcome that dismissed quibbles over any ambiguity in the statutory language. “HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations.” The court also emphasized that the USPTO has “deeming rignts” as a procedural matter to decide whether or not to accept continuation applications filed on the issue date of a parent application.
The opinion is notable for its vigorous defense of the status quo and its recognition that despite a lack of compelling statutory evidence, “long-standing administrative construction” is a “powerful reason” for preserving the settled expectations of thousands of patent owners. Henceforth, these patentees and their legal counsel—many of whom routinely ignore “the safest of lawyerly practices” by filing documents on the last day allowed by law—can thank the Godfrey Court for its unforeseen largesse. Meanwhile, we plan to continue filing divisional and continuation applications for our clients at least a couple of days early.
– Jessica Miles and Jonathan L. Schuchardt, PhD, JD
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