This case involved the single issue of whether, under 35 U.S.C. § 120, a continuation patent application that is filed on the same day that the underlying parent patent issues is “filed before the patenting” of the earlier application, and therefore entitled to the filing date of the earlier application, rather than its own filing date.  HTC contended that, because the application of the patent-in-suit was filed on the same day that its parent application issued, it could not be entitled to an earlier filing date, and therefore an intervening PCT publication could be invalidating prior art.

The district court agreed with HTC and held the patent-in-suit was invalid.  The Federal Circuit, however, reversed.  It stated that Section 120’s language of “filed before the patenting” does not by its terms answer the question of 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.  Here, the history is determinative of the issue and the fact that the later application can be filed on the same day as the patenting of the earlier application and still be entitled to the earlier filing date.  Specifically, the court relied on the 1864 Supreme Court opinion on Godfrey v. Eames and subsequent cases, on the 1952 Act, on the PTO’s interpretation as set forth in the MPEP, and on the fact that other applicants likely relied on these prior precedents in filing applications on the date of issuance of the earlier applications with the belief that this would be sufficient to ensure the earlier filing date under Section 120.  

Immersion Corporation v. HTC Corporation, Case No. 2015-1574 (June 21, 2016); Opinion by: Taranto, joined by Prost and Linn; Appealed From: United States District Court for the Southern District of Delaware, Andrews, J., and Dyk, J. (by designation).  Read the full opinion here.

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