Federal Circuit confirms continuation patent rules in HTC case

The US Court of Appeals for the Federal Circuit has reversed a lower court decision centring on the correct date for filing continuation patents.

In a ruling handed down yesterday, June 21, the Federal Circuit overturned a 2015 ruling by the US District Court for the District of Delaware that had invalidated three patents owned by licensing company Immersion in its dispute against HTC.

In the dispute HTC claimed that the three continuation patents were invalid in view of intervening prior art.

In February last year, the Delaware court found in favour of HTC, and said that the patents were not valid continuation applications arising from US patent number 6,429,846, which was granted on August 6, 2002. Immersion appealed against the ruling at the Federal Circuit.

Immersion had filed international application number PCT/US01/01486, and that application was published on July 26, 2001. The 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”.

Beginning in August 2002, ie, after the July 26, 2002 date, Immersion filed 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.

The dispute centres on whether the 7,148,875 application, which was filed on the same date that the ‘846 patent was issued and led to a chain of applications and patents including three of the patents-in-suit, was “filed before the patenting” of the ‘846 application and is entitled to the 2000 filing date.

HTC claimed that although the three patents all claim priority to the filing date of the parent patent via a series of continuation applications, Immersion’s original application was filed on the same day that the parent patent issued, not before it.

Under US law, a continuation patent needs to be filed before the parent patent is issued.

In yesterday’s ruling, the Federal Circuit said the question at issue is what constitutes “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 court ruled.

Courtenay Brinckerhoff, partner at law firm Foley & Lardner, told WIPR that the US Patent and Trademark Office always has interpreted the statute as being satisfied when a continuation application is filed on the same day that its parent application is patented, and “applicants and patent owners have relied on that interpretation for decades”.

The Intellectual Property Owners Association intervened in the dispute. In an amicus brief filed in April last year it said that the ripple effects of the Delaware court’s decision could “reach over 30,000 patents”.

Vic Viegas, chief executive of Immersion, said following the ruling: “We are pleased that the Federal Circuit has respected our years of innovative effort … and we remain steadfast in securing the proper value for our intellectual property.”