Should you file a continuation on the day of issuance?

On February 11, 2015, Judge Andrews of the District of Delaware granted a motion for summary judgement of invalidity of three patents because a parent application was filed on the same day that the grandparent application was issued.¹

Three patents were invalidated in the ruling (US 7,982,720; US 8,031,181; and US 8,059,105),² all of which shared the same parent application US 7,148,875.³ The critical fact to the judge’s ruling was that the ‘875 patent was filed on August 6, 2002, claiming priority from US 6,429,846,⁴ which was issued on the same date.⁵

Continuation applications are governed by Title 35 of the United States Code:

An application for patent for an invention disclosed in the manner provided by section 112 (a) in an application previously filed in the United States, or as provided by section 363, which names an inventor or joint inventor in the previously filed application 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 and if it contains or is amended to contain a specific reference to the earlier filed application.⁶

The defendants (HTC) argued that the parent ‘846 patent was issued on August 6, 2002, at the first second after midnight, and therefore the plaintiff (Immersion) could not have filed the ‘875 child application “before” the issuance of the parent, if it filed the child on the same day.⁷

The plaintiff argued that this practice was sanctioned by the PTO and pointed to the MPEP, which states that “[i]f 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 . . . that the patent issues on the prior application.”⁸ The plaintiff contended that the court should give deference to the PTO.⁹

Judge Andrews, however, refused to give the PTO deference on this issue.¹⁰ He explained that the court did not have to defer to the PTO unless the statute was “silent or ambiguous with respect to the specific issue.” ¹¹ He construed the word “before” in 35 U.S.C. § 120 literally, and held that the PTO construction was wrong.¹²

Although Judge Andrews was not convinced that the parent ‘846 patent was issued at the first second after midnight, he ruled that Immersion had the burden of proving that the child ‘875 patent was filed before the issuance of the parent on August 6, 2002.¹³ Since Immersion offered no evidence on this point, the three involved patents were not entitled to a priority date earlier than August 6, 2002.¹⁴

Lastly, both parties agree that a Japanese patent application was published with identical specification more than a year before August 6, 2002.¹⁵ Judge Andrews therefore held that the three involved patents were invalid as they were anticipated.¹⁶

On March 23, Immersion announced that it agreed to enter into a settlement and license agreement with HTC, but preserving the right to appeal the invalidity ruling on the three patents.¹⁷ Immersion filed appeal to the Federal Circuit on April 21, 2015. The appeal is currently pending as of May 7, 2015.

While writing this blog post, we were curious as to how many patents this decision could potentially affect. We used a block of 300 patents in the 7-series of U.S. Patents as a sample, and found that two out of the three hundred patents have continuation filings on the day of issuance. If we could extrapolate this observation, as much as 1% of US patents could be invalidated by this decision.