Federal Circuit hears arguments in 30,000 patents case

The US Court of Appeals for the Federal Circuit is set to consider a dispute today which could affect 30,000 patents if a lower court’s ruling is left untouched.

The court will hear oral arguments in Immersion v HTC, a dispute centring on the validity of patents covering touch screen technology.

In the dispute, originally heard at the US District Court for the District of Delaware, HTC claimed that three Immersion-owned continuation patents were invalid in view of intervening prior art.

In February last year, the Delaware court found in favour of HTC, prompting Immersion to appeal against the ruling at the federal circuit.

The district court found that the patents were not valid continuation applications arising from US patent number 6,429,846.

The ‘846 patent was granted on August 6, 2002, the same day that Immersion filed a continuation application. That continuation application eventually resulted in US patent number 7,148,875 being issued, which led to a chain of applications and patents, including three of the patents-in-suit.

In April last year, Immersion appealed against the ruling to the federal circuit.

But HTC claimed that though 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 the same day that the parent patent issued and not before it.

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

According to Courtenay Brinckerhoff, partner at law firm Foley & Lardner, the federal circuit is “likely to reverse the district court decision” but it will be interesting to see the rationale it applies.

“The district court accepted HTC’s argument that the phrase ‘filed before’ means that a continuation application must be filed before its parent application issues as a patent.

“While that interpretation may make sense in the abstract, the US Patent 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 also intervened in the dispute and said, in an amicus brief filed in April last year, that the ripple effects of the district court decision could “reach over 30,000 patents”.

Brinckerhoff added: “The federal circuit should reverse the district court because its interpretation could invalidate tens of thousands of patents on what amounts to a technicality.”