Immersion Corp. v. HTC Corp.

• Decision Date: 21 June 2016
• Docket Number: 2015-1574
• Citation: 119 U.S.P.Q.2d 1083,826 F.3d 1357
• Parties: Immersion Corporation, Plaintiff–Appellant v. HTC Corporation, HTC America, Inc., Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

826 F.3d 1357

119 U.S.P.Q.2d 1083

Immersion Corporation, Plaintiff–Appellant

v.HTC Corporation, HTC America, Inc., Defendants–Appellees.

2015-1574

United States Court of Appeals, Federal Circuit.

Decided: June 21, 2016

Joseph R. Palmore, Morrison & Foerster LLP, Washington, DC, argued for plaintiff-appellant. Also represented by Marc A. Hearron, Bryan Leitch ; Harold J. McElhinny, San Francisco, CA; Marc David Peters, Bryan J. Wilson, Palo Alto, CA.

Dan L. Bagatell, Perkins Coie LLP, Phoenix, AZ, argued for defendants-appellees. Also represented by Ryan J. McBrayer, Eric Miller, Seattle, WA; John Peter Schnurer, San Diego, CA.

Benjamin M. Shultz, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for amicus curiae United States. Also represented by Benjamin C. Mizer, Charles M. Oberly, III, Mark R. Freeman; Thomas W. Krause, William Lamarca, Farheena Yasmeen Rasheed, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

George Frank Pappas, Covington & Burling LLP, Washington, DC, for amicus curiae Intellectual Property Owners Association. Also represented by Paul Berman, John Arthur Kelly, Ranganath Sudarshan ; Herbert Clare Wamsley, Jr., Intellectual Property Owners Association, Washington, DC; Philip Staton Johnson, Johnson & Johnson, New Brunswick, NJ; Kevin H. Rhodes, 3M Innovative Properties Company, St. Paul, MN.

Before Prost, Chief Judge, Linn and Taranto, Circuit Judges.

Taranto

, Circuit Judge.

This case 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 haptic 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

Beginning 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 requirements.

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 '109 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 filing date of August 6, 2002, the actual filing 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

,

'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. § 1295(a)(1) and review de novo the district court's interpretation of section 120. See

Belkin Int'l, Inc. v. Kappos , 696 F.3d 1379, 1381 (Fed. Cir. 2012).

Discussion

Section 120

provides, in relevant part:

[a]n 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.

35 U.S.C. § 120

(emphasis added). Section 120 was included in the Patent Act of 1952, and the language relevant here has remained materially unaltered since then. See Act of July 19, 1952, Pub. L. No. 82–593, § 120, 66 Stat. 792, 800; Act of November 14, 1975, Pub. L. No. 94–131, § 9, 89 Stat. 685, 691–92; Patent Law Amendments Act of 1984, Pub. L. No. 98–622, § 104(b), 98 Stat. 3383, 3384–85; Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106–113, App'x I, § 4503(b), 113 Stat. 1501, 1501A-563–64; Leahy–Smith America Invents Act, Pub. L. No. 112–29, §§ 3(f), 15(b), 20(j)(1), 125 Stat. 284, 288, 328, 335 (2011); Patent Law Treaties Implementation Act of 2012, Pub. L. No. 112–211, §§ 102(5), 202(3), 126 Stat. 1527, 1531, 1536.

Section 120

's language does not by its terms answer the question 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. Section 120's language requires that the later...