Federal Circuit's Decision Could Invalidate 13,500 Patents

By Jonathan R. Tung, Esq. on May 12, 2016 | Last updated on March 21, 2019

The Federal Circuit Court of Appeals stands poised with its finger potentially over the big red button that would potentially invalidate some 13,500 continuation patents filed with the USPTO -- with 13,500 being a conservative number. If the court rules in favor of defendant HTC, right or wrong, it could spell a tidal wave of litigation over continued patents whose applications were filed the same day as the original parent application.

What Does "Before" Mean?

The case of Immersion Corp. v. HTC Corp. involves a dispute over the validity of patents based on the defending HTC's argument of prior art and the application of 35 USC sec. 120. The relevant language goes like this (emphasis added):

"An 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 ...."

In the case of Immersion, the parent application was filed on the same day that the parent was actually granted, causing the district court to break from tradition. In the past -- and still to this day, presumably -- the USPTO had interpreted the statute to allow for same-day filings of continuing applications. But here, the district court found that such an interpretation squarely contravened the plain language of the statute.

Issues of Practicality -- and Consequences

The district court's purposes seem noble and harmless enough ... but harmless they are not. The amicus of the United States government quickly argued that the USPTO's interpretation of the statute was a reasonable interpretation of "before" since no other applicable law, procedure, or statute governs the exact time an application needed to be filed or when a patent would be granted. Under the Chevron's doctrine of "reasonable interpretation of ambiguity" an otherwise reasonable reading of an ambiguous statute would be upheld. Obviously two different authorities think that "before" has differing levels of clarity.

But almost more terrifying is the prospect of having to deal with the invalidation of at least 13,500 patents that have been issued by the USPTO on the same day their parent application issued as a patent. It has been a long standing practice to permit same-day filings, as pointed out in the amicus filed by the Intellectual Property Owners Association. If HTC were to have its way, patents granted from continuations filed on the same day that parents abandoned could also be invalidated, an almost absurd result.

Plain language is plain language. But at what point does it lead to an overturn of the entire system?

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