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Will Federal Circuit Invalidate 13,500 Continuation Patents?

Source: National Law Review by: Courtenay C. Brinckerhoff


The Federal Circuit is set to hear oral arguments in Immersion Corp. v. HTC Corp. on May 6, 2016. According to the amicus brief filed on behalf of the United States, if the court affirms the district court decision “over 13,500” continuation patents could be invalidated. According to the amicus brief filed by the Intellectual Property Owners Association, the ripple effects of such a decision could reach over 30,000 patents. Indeed, this could be the one case where all stakeholders (except maybe HTC) hope that the court upholds the USPTO’s interpretation of a statute.

When Is An Application Filed “Before” The Patenting Of Its Parent?

HTC asserted that several Immersion patents were invalid in view of intervening prior art because one of the parent applications was not entitled to claim priority to its parent application under 35 USC § 120. That statue provides:

An application for patent for an invention 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 ….

(Section 120 was amended by the AIA, but the above-quoted language appears in both versions of the statute.)

The parent application at issue was filed on the same day that its parent was granted. The U.S. District Court for the District of Delaware refused to give deference to the USPTO’s interpretation of the statute–which permits same-day filings of continuing applications–and held that “before” means “before”:

35 U.S.C. § 120 is not silent on when a continuation must be filed in order to get the parent’s priority date. Nor is it ambiguous. It expressly states that the application must be filed “before” the parent application issues.

According to the court, in order to show that the parent application was timely filed, Immersion would have to “produc[e] some evidence that it filed the continuation applications before the parent patent issued.” If HTC is correct in asserting that “a patent automatically issues at 12:00:01 a.m. on the issue day,” that could be an impossible burden.

Having found that the continuation patents at issue are not entitled to the priority date claimed, the district court found them to be anticipated by intervening prior art (including published foreign counterpart applications). Immersion appealed that decision to the Federal Circuit.

…continue reading on original source

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Author: grill-ip

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