Immersion Corp. v. HTC Corp.

826 F.3d 1357, 119 U.S.P.Q. 2d (BNA) 1083, 2016 U.S. App. LEXIS 11176, 2016 WL 3408017
CourtCourt of Appeals for the Federal Circuit
DecidedJune 21, 2016
Docket2015-1574
StatusPublished
Cited by4 cases

This text of 826 F.3d 1357 (Immersion Corp. v. HTC Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Immersion Corp. v. HTC Corp., 826 F.3d 1357, 119 U.S.P.Q. 2d (BNA) 1083, 2016 U.S. App. LEXIS 11176, 2016 WL 3408017 (Fed. Cir. 2016).

Opinion

TARANTO, Circuit Judge.

This ease involves one necessary condition, under 35 U.S.C. § 120, for treating a patent application, filed as a continuation of an earlier application, as having the earlier application’s filing date, not its own filing date. That timing benefit shrinks the universe of “prior” ,art for determining validity. The condition at issue, as relevant here, is that the continuation application be “filed before the patenting” of the earlier application. The question is whether, for that condition to be met, the continuing application has to be filed at least one day before the earlier application is patented, or whether an application may be “filed before the patenting” of the earlier application when both legal acts, filing and patenting, occur on the same day.

We adopt the latter position. The statutory language does not compel, though it certainly could support, adoption of a day as the unit of time for deciding if filing is “before” patenting. And history is decisive in permitting the same-day-continuation result, under which, using units of time of less than a day, a “filing” is deemed to occur before “patenting.” The Supreme Court approved same-day continuations in 1863, and the 1952 Patent Act, which introduced section 120, was broadly a codification of existing continuation practices. And same-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century, which has plausibly engendered large-scale reliance and which reflects the agency’s procedural authority to define when the legal acts of “filing” and “patenting” will be deemed to occur, relative to each other, during a day.

We reverse the district court’s contrary holding and remand. Immersion Corp. v. HTC Corp., No. 1:12-cv-00259, 2015 WL 627425 (D. Del. Feb. 11, 2015).

BACKGROUND

On January 19, 2000, Immersion Corporation filed with the United States Patent and Trademark Office a patent application disclosing a mechanism for providing hap-tic feedback to users of electronic devices. On August 6, 2002, that application issued as U.S. Patent No. 6,429,846. Meanwhile, Immersion had filed International Application No. PCT/US01/01486, and that application was published as WO 01/54109 on July 26, 2001. The written description of the WO ’109 publication is materially identical to that of the ’846 patent. Under 35 U.S.C. § 102(b) (2006), 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, 2002.1

[1360]*1360Beginning in August 2002, i.e., after the July 2002 date, Immersion filed in the United States a series of 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. Immersion invoked 35 U.S.C. § 120, under which, as relevant here, “[a]n application for patent for an invention [that is] disclosed” adequately (as specified in certain portions of 35 U.S.C. § 112)

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.

35 U.S.C. § 120. It is not disputed here that section 120 allows multiple links of such “continuation” applications in a chain leading back to an earlier application as long as each link meets the section’s re-qdirements.

Here, one link is contested. Immersion filed an application — which eventually matured into U.S. Patent No. 7,148,875 — on August 6, 2002, the same day that the ’846 patent issued. The present dispute is whether the ’875 patent’s application was “filed before the patenting” of the ’846 patent’s application and hence is entitled to the 2000 filing date of the ’846 patent. No other requirement of section 120, e.g., an adequate disclosure, is in dispute.

Later links in the relevant chain are not contested here. 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 (or, in one instance, abandoned). See HTC Br. at 5 (patent family tree). That process led to the three patents at issue in this appeal, U.S. Patent Nos. 7,982,720, 8,031,181, and 8,059,105, all of which share a written description with the WO ’109 publication.

In early 2012, Immersion sued HTC Corp. and HTC America, Inc. (collectively, HTC) for infringing the ’720, ’181, and ’105 patents (as well as two other patents no longer at issue). HTC sought summary judgment that the asserted patent claims are invalid under 35 U.S.C. § 102(b) (2006) because the WO T09 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 (Judge Andrews) 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. The correctness of that conclusion is the issue before us. It is undisputed here that, if that conclusion is correct, the patents at issue are not entitled to the ’846 patent’s application’s January 19, 2000 filing date, but only to a fifing date of August 6, 2002, the actual fifing date of the ’875 patent’s application. It is likewise undisputed that the consequence is that the patents are invalid because the WO ’109 publication was published more than one year before August 6, 2002. Immersion, 2015 WL 627425, at *2-4.

Immersion and HTC settled as to the other two patents at issue, as to which the district court (Judge Dyk), in entering final judgment, dismissed Immersion’s claims with prejudice. The final judgment also ruled in favor of HTC as to the ’720,-[1361]*1361’181, and ’105 patents, based solely on the earlier summary judgment of those patents’ invalidity. Immersion appeals, challenging the district court’s interpretation of section 120 as barring a second application from receiving the filing date of a first application (even if other section 120 requirements are met) when the second application is filed on the same day that the first one issues, not the day before or earlier. We have jurisdiction under 28 U.S.C.

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826 F.3d 1357, 119 U.S.P.Q. 2d (BNA) 1083, 2016 U.S. App. LEXIS 11176, 2016 WL 3408017, Counsel Stack Legal Research, https://law.counselstack.com/opinion/immersion-corp-v-htc-corp-cafc-2016.