Morrison & Foerster’s important win in the Federal Circuit for Immersion Corporation was named among the most significant patent decisions so far this year in Law360’s Top Patent Cases of 2016: Midyear Report. As one practitioner quoted by Law360 stated, MoFo’s win for Immersion “saved from the fire tens of thousands of patents that would have gone up in smoke.”
Immersion Corp. v. HTC Corp., decided in June, involved the rules for filing of a “continuation application” for a patent, through which a patent applicant can secure the benefit of the filing date of an earlier application. The earlier filing date can ultimately make the difference between the validity and invalidity of the patent, as it reduces the amount of potentially intervening prior art. Among the statutory requirements for a continuation application is that it be “filed before the patenting” of the earlier application. The Patent and Trademark Office (PTO) has said for more than 50 years that this requirement is satisfied so long as the continuation application is filed on the same day that the patenting occurs.
In patent infringement litigation brought by Immersion, however, a district court rejected the PTO’s rule permitting same-day filings as foreclosed by the statute, which the court read as effectively requiring all continuation applications to be filed no later than the day before the patenting. And because Immersion had filed a same-day continuation application in reliance on the PTO’s rule and there was otherwise-invalidating prior art from before that filing date, the court invalidated Immersion’s patents. As the PTO explained in an amicus brief filed in the Federal Circuit in support of Immersion, the district court’s ruling not only invalidated Immersion’s patents but also put at risk tens of thousands of patents that had issued based on same-day continuation applications.
MoFo persuaded the Federal Circuit to reverse the district court’s judgment. The court held unanimously that the statute could be read to permit same-day filings, that “history is decisive in permitting” that practice, and that “large-scale reliance” interests also supported affirming PTO's longstanding rule.
The appeal was argued by Joe Palmore, and the MoFo team included Harold McElhinny, Bryan Wilson, Marc Peters, Marc Hearron, and Bryan Leitch.For more information, read Law360’s Midyear Report.