CAFC in Immersion v. HTC case: same day continuation filing is all right

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.


AND


This is not a case, as we have explained, where the
language of the statute actually contradicts the
longstanding judicial and agency interpretation. Nor is it
a case in which the longstanding agency position is plainly
outside the agency’s granted authority. Here, the
position is an essentially procedural one establishing
when the agency will consider an input into its process
(the legal act of “filing”) and an output of its process (the
legal act of “patenting”) to occur relative to each other—
neither one being a precisely identifiable self-defining
physical act, but a legally defined event. Similar “deeming”
determinations in the federal courts, e.g., Fed. R.
App. P. 4(a)(2), 4(a)(7)(A)(ii), 25(a)(2)(A) & (B), have long
been treated as non-substantive, procedural matters
under the Rules Enabling Act, 28 U.S.C. § 2072. See
Hanna v. Plumer, 380 U.S. 460, 463–65 (1965) (methods
of serving process to initiate litigation). The PTO has
been granted authority to establish procedures that
organize its processing of requests to issue (or cancel)
patents, from entry to exit. See 35 U.S.C. § 2; Cooper
Techs. Co. v. Dudas, 536 F.3d 1330, 1336–38 (Fed. Cir.
2008); Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir.
2006); In re Sullivan, 362 F.3d 1324, 1328 (Fed. Cir.
2004); see also Tafas v. Doll, 559 F.3d 1345, 1352–53 (Fed.
Cir. 2009), vacated, 328 F. App’x 658 (Fed. Cir. 2009); id.
at 1365 (Bryson, J., concurring).