IPO Files Amicus Brief in Immersion Corp. v. HTC Corp.

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

Last week, in Immersion Corp. v. HTC Corp., the Intellectual Property Owners Association (IPO) filed a brief as amicus curiae in support of Plaintiff-Appellant Immersion Corp.  In that case, the District Court for the District of Delaware construed 35 U.S.C. § 120 to prohibit filing a continuation application on the day its immediate parent granted, contrary to established U.S. Patent and Trademark Office practice.  The District Court also refused to grant the Office any deference in the matter.

In its brief, the IPO asserts that the Federal Circuit "should hold that continuations that are filed on the day that the parent patent issues should be able to claim priority to the parent application's priority date."  In support of this assertion, the IPO argues that the District Court's decision contravened more than 150 years of patent practice tracing back to the 1863 Supreme Court case of Godfrey v. Eames, notes that another District Court reached the opposite conclusion, and points out that the Office has consistently interpreted § 120 to permit continuations that are filed on the same day that a parent patent issues.  The IPO also argues that Office's interpretation is entitled to deference.  Finally, the IPO concludes by providing an idea of the impact the District Court's decision will have on patentees if allowed to stand.

With regard to Godfrey, the IPO notes that the case involved a patent that issued from a second application that was filed on the same day that the first application was withdrawn by the patentee.  The defendant argued that by the second application lost entitlement to the first application's priority date.  However, the Supreme Court disagreed, holding that "if a party choose to withdraw his application for a patent . . . intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law."  The IPO concludes that "per the rule in Godfrey, a continuation filed on the same day as its parent application's withdrawal is entitled to the parent's priority date."  The IPO also argues that:

Under the Godfrey rule, an application filed on the same day as its parent application's withdrawal constitutes a "continuous" application entitled to the parent's priority date. Therefore, § 120 should be interpreted in a similar manner for patented applications such that a continuation application can claim priority if it is filed on the same day that its parent application issues as a patent.

In support of this argument, the IPO notes that "the legislative history [concerning § 120] says nothing about overruling Godfrey or changing its rule that allows continuation applications to be filed on the same day that the parent application is withdrawn or matures into a patent."

The IPO also notes that "the only other district court to address the specific issue presented in this case has held that a continuation application can be filed on the day that the parent application issues as a patent without a loss of priority."  According to the IPO, that other court, the District Court for the Western District of Wisconsin, decided in MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008), "that the same day filing satisfied the 'copendency requirement' of § 120 because the Patent Office has consistently defined 'before' to mean 'not later than.'"

As for the Office's interpretation of § 120, the IPO points out that the Office's guidance regarding copendency can be found in M.P.E.P. § 211.01(b)(I), which states:

Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.  If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application [emphasis added in IPO brief].

The IPO argues that the above interpretation is entitled to deference, contrary to the Delaware District Court's determination, explaining that:

The district court's holding that no Chevron deference is due requires one to adopt faulty logic, namely, that the statute requires action 'before' a given instant in time when that moment in time is not necessarily ascertainable.  Indeed, the statute and the regulations are silent about the precise time when a patent application is considered to issue.  Thus, there is ambiguity as to when a patent application must be filed to be 'before' a patent issues on the parent application.

The IPO explains further that "'patenting' could occur on the issue date when the clock strikes twelve o'clock in the morning, when the Patent Office opens, when the patentee is first sent a copy of the issued patent, when the patent is published in the Official Gazette, or at any other time on the issue date," and further that "a continuation application could be filed a day, a minute, a second, or even a fraction of a second before the patent issues (whenever that is deemed to be) and still be filed 'before' patenting."  The IPO argues that "[g]iven the large potential for confusion caused by the statute's reference to 'before' and the various alternatives for when 'patenting' could occur, the Patent Office's decision to interpret 'before' to mean 'not later than,' see M.P.E.P. § 711.02(c), is eminently reasonable."

In discussing the impact of the Delaware District Court's decision, the IPO indicates that it is "concerned that the district court's decision in this case will have the effect of divesting patentees of valuable rights to which, but for the change in law effected by the district court, they are entitled."  In quantifying this impact, the IPO notes that an analysis conducted at the IPO's request by Ocean Tomo determined that "as of May 1, 2015, of the 1,474,712 in-force patents that resulted from continuation applications, fully 12,300 have a filing date that is the same as the issue date of the parent."  The IPO also notes that this figure is conservative in that it does not take into account patents that resulted from parent applications that were abandoned or terminated on the day that the patent application was filed or that had an ancestor filed on the same day its parent was issued, abandoned, or terminated.  According to Ocean Tomo, an estimated 30,000 additional patents could fall into these latter categories.

The IPO brief concludes by stating that:

Amicus Curiae's members and others have relied on an interpretation of § 120 that is at odds with the district court's decision under review.  If the Court were to affirm that decision, it would call into question the validity of a sizable number of issued patents -- patents that were prosecuted in a manner consistent with Patent Office practice and Supreme Court precedent dating back over 150 years.  There is no reasonable justification for (and no countervailing benefits supporting) such a capricious, harmful departure from long-standing practice.

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.