Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
Immersion v. HTC – Avoiding the invalidation of some ten thousand patents, the Circuit reverses the district of Delaware, ruling that a continuation application filed the same day as the issuance of the parent is filed “before” the patent issues. The Circuit notes that the Supreme Court approved same-day continuations in 1863, and the 1952 Patent Act, which introduced 35 U.S.C. section 120, was broadly a codification of existing continuation practices. Same-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century. This practice has engendered large-scale reliance and reflects the agency's procedural authority to define when the legal acts of "filing" and "patenting" will be deemed to occur.
Immersion Corporation v. HTC Corporation, Fed. Cir. Case 2015-1574 (June 21, 2016)
Immersion filed with a patent application disclosing a mechanism for providing haptic feedback to users of electronic devices. On August 6, 2002, that application issued as the ’846 patent. Meanwhile, Immersion had filed a PCT application that was published as WO 01/54109 on July 26, 2001. The written description of the WO '109 publication is identical to that of the '846 patent. Under § 102(b), the WO '109 publication became invalidating as to claims to subject matter disclosed in that publication unless those claims were entitled to an effective filing date before July 26, 2002.
In August 2002, Immersion filed a series of U.S. applications that similarly shared the written description of the '846 patent and for which Immersion asserted an entitlement to an effective filing date of January 19, 2000, the filing date of the '846 patent's application. Here, Immersion filed an application—which eventually matured into the ’875 patent—on August 6, 2002, the same day that the '846 patent issued. The present dispute is whether the '875 application was "filed before the patenting" of the '846 application and hence is entitled to the 2000 filing date of the '846 patent.
Immersion filed additional applications that the parties accept as direct or indirect continuations properly tracing back to the '875 patent's application, each filed at least one day before its predecessor application was patented. That process led to the three patents at issue in this appeal, the ’720, ’181 and ’105 patents, all of which share a written description with the WO '109 publication. In early 2012, Immersion sued HTC for infringing the three patents. HTC sought summary judgment that the asserted patent claims are invalid under § 102(b) because the WO '109 publication of July 26, 2001, disclosed the subject matter of those claims. The decisive issue was the priority date to which the patents at issue are entitled based on the chain of applications tracing back to the '846 patent—specifically, whether the link between the '875 patent's application and the '846 patent's application met section 120's timing requirement.
The district court held that the '875 patent's application was not "filed before the patenting" of the '846 patent's application within the meaning of section 120, because they were filed on the same day. Therefore, the court granted summary judgement that the three patents were invalid.
There Are Many Reasons Not to Abandon the Sufficiency of Same-Day Filing
Section 120 provides, in relevant part:
[a]n 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 included in the Patent Act of 1952. Its 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. Section 120 does not say that the unit of time is a day, as opposed to some smaller unit. The central premise of HTC's position—that neither of two events on the same day can be "before" the other—is that time under the section 120 language at issue must be measured with a "date-level granularity," i.e., in units no smaller than a "day." The formulation presupposes the answer in referring to "dates" and even in using the phrase "on or before": "on a day" is ordinary usage; "on a minute" or "on a moment" or "on a time" is not. And it is only on that presupposition that the dichotomy between "before" and "on or before" is forceful, as it has been precisely in cases involving day (equivalently, date) language. But that dichotomy is inapplicable, or 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. Here, the language at issue does not resolve the crucial unit-of-time issue.
We must therefore widen the lens to look beyond the specific phrase at issue. That widening immediately reveals how pervasively the Patent Act elsewhere, including in other phrases within section 120, specifies time by express reference to days, months, or years. However, the prevalence of date-based usage elsewhere in the statute does not by itself determine the meaning of a statutory phrase that does not refer to a unit of time: differences in text often furnish a reason for differences in meaning.
To be sure, the usage elsewhere in the Act means that the particular language of section 120 that is at issue here can bear a day-as-unit meaning. That meaning might even 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 the question is presented. We cannot properly disregard the history bearing on the interpretive question, and that history, we think, is so weighty as to be determinative.
Long before Congress enacted section 120 in the 1952 Act, the Supreme Court in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864), established the basis for same-day continuations for priority-date purposes. There, Mr. Godfrey had withdrawn a previously filed patent application and, on the same day, refiled his application with an amended specification. The Court held that "if a party choose to withdraw his application for a patent intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law." It adopted that position for purposes of giving the earlier application's priority date to the successor application (where the two were sufficiently related). And in the decades following Godfrey, the Supreme Court, other federal courts, and the Patent Office consistently followed Godfrey's rule.
The 1952 Act was the first to put continuation practice fully into statutory text, which it did through section 120. The Senate report accompanying House Bill 7794, 82d Cong. (1952), describes section 120 as written to "express in the statute certain matters which existed in the law up to that point but which had not before been written into the statute, and in so doing make some minor changes in the concepts involved." None of the legislative history or contemporaneous commentary indicates an intent to alter Godfrey's long established result approving same-day continuations for priority-date purposes. And adjudicatory reliance on Godfrey continued after 1952.
Soon after the 1952 Act's enactment, the PTO promulgated 37 C.F.R. § 1.78(a) (1960), stating that "the benefit of the filing date of a prior application" can be obtained when "an applicant files an application claiming an invention disclosed in a prior filed copending application." That word on its face would naturally include, not exclude, the same-day situation, and in any event, the word's prior usage makes that understanding clear.
The agency soon went beyond the term "copending" (with its Godfrey-based meaning) to be more explicit about same-day filings. 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 with it if the second application is filed on the same day or before the patenting of the first application."
The 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. The Court has emphasized the weight of this consideration in patent law in particular. WarnerJenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997). Here, HTC's position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. Several patents claiming effective filing dates in reliance on the PTO's articulated position have been the subject of litigation in the recent past. As far as we are aware, until this case, the only square rulings on the issue upheld the same-day-continuation position (rulings issued in two cases by the same judge).
Even as to patents currently in force, overturning the PTO's position would affect the priority dates of more than ten thousand patents. For those and decades of earlier patents, it is plausible that applicants relied on the policy approving same-day continuations in at least two ways. Applicants' reliance on the PTO position in timing their filing of continuations need not reflect the safest of lawyerly practices to be given weight. After such same-day continuations issued as patents, the patentees plausibly made investments based on assessments of validity using the earlier priority dates. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate this policy.
In short, the 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 the established position. And the conclusion is reinforced by the fact that Congress has done nothing to disapprove of this clear position despite having amended section 120 several times since its first enactment in 1952. This is not a case, as we have explained, where the language of the statute actually contradicts the longstanding judicial and agency interpretation. Nor is it a case in which the longstanding agency position is plainly outside the agency's granted authority.