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 theamicus 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.

The United States Amicus Brief

The United States amicus brief urges the Federal Circuit to reverse the district court and uphold the USPTO’s interpretation of the statute, which is set forth in MPEP § 211.01(b):

If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.

The United States argues that the USPTO’s interpretation is a reasonable interpretation of “before,” since no statute, regulation, or procedure governs the exact time an application is filed or the exact time a patent is granted. The United States also discusses the impracticalities of the district court’s interpretation, which would require “determining or tracking time-of-day information that the agency as not historically collected and does not require for any other purpose.”

The United States also explains that the USPTO’s interpretation is consistent with the legislative history of § 120, which is understood to be a codification of then-current law, which includedGodfrey v. Eames, 68 U.S. (1 Wall.) 317 (1863), in which the Supreme Court upheld a continuation application that had been filed on the same day its parent application was withdrawn. The United States also notes that even though Congress has amended § 120 five times since the USPTO published its interpretation in the MPEP, Congress has not taken any steps to undermine the USPTO’s interpretation that the timing requirements for a continuation patent can be satisfied by a same-day filing.

The United States also argues that the USPTO’s interpretation is entitled to deference underChevron as a reasonable interpretation of an ambiguous statute, or under Skidmore due to its persuasiveness.

As noted above, the United States also points out that the district court’s interpretation could invalidate “over 13,500 patents [that] have issued from continuing applications filed the same day their parent application issued as a patent.”

The IPO Amicus Brief

The IPO amicus brief makes many of the same points made in the United States brief, but where the United States emphasized the impracticalities of the district court’s interpretation, IPO focuses on the longstanding practice of permitting same-day continuation application filings and the legislative history of § 120. The IPO amicus brief also discusses stakeholder reliance on the USPTO’s interpretation, and presents the results of a survey of its members, in which 58% reported that they had filed a continuation application on the same day its parent granted.

13,500 Is The Tip Of The Iceberg

IPO notes that only counting the number of patents granted from continuation applications filed on the same day that their parents were granted under-counts the number of patents put in jeopardy by the district court’s decision. IPO points out that patents granted from continuation applications filed on the same day that their parents were abandoned also could be invalidated, as could patents whose grandparents were same-day continuation applications.

If the Federal Circuit holds that “before” does not include “on the same day” in the context of § 120, what would stop it from reaching a similar conclusion about the “before” used in the pre-AIA version of § 102(a) and/or the AIA versions of § 102(a)(1) and § 102(a)(2)?