## Facts

- Immersion owned patents covering haptic feedback technology for electronic devices.
- Immersion filed a U.S. application on January 19, 2000, which issued as U.S. Patent No. 6,429,846.
- Immersion’s materially identical PCT application published as WO 01/44109 on July 26, 2001.
- On August 6, 2002, the same day the ’846 patent issued, Immersion filed a continuation application that later issued as U.S. Patent No. 7,148,875 and was asserted against HTC.
- Immersion sued HTC in the District of Delaware for infringement; the asserted patents depended on priority to the January 19, 2000 filing date.
- HTC argued the asserted patents were invalid under pre-AIA 35 U.S.C. § 102(b) because WO 01/44109 would be prior art unless the ’875 patent could claim priority under 35 U.S.C. § 120.
- The district court held § 120’s “filed before the patenting” requirement was not satisfied by a continuation filed on the parent’s issue date, treated August 6, 2002 as the effective filing date, and granted summary judgment of invalidity.
- Immersion appealed.

## Issues

1. Under 35 U.S.C. § 120, is a continuation application “filed before the patenting” of the parent when it is filed on the same calendar day the parent patent issues?

## Decision

- The Federal Circuit reversed and remanded.
- The court held that, for § 120, a continuation may be “filed before the patenting” of the parent even when filed on the same calendar day the parent issues.
- Because same-day filing can satisfy § 120, the continuation was entitled to claim priority to the earlier application’s filing date, defeating the district court’s § 102(b) invalidity ruling based on WO 01/44109.

## Legal Principles

- Section 120 does not require a one-day separation between a continuation’s filing date and the parent’s patent-issuance date; “before” can be satisfied by temporal sequencing within a single day.
- Statutory interpretation of § 120 is informed by pre-1952 continuation practice and Congress’s 1952 codification of that practice.
- Longstanding PTO practice accepting same-day continuations supports construing § 120 to permit same-day filings, particularly where settled reliance interests are implicated.

## Conclusion

A continuation filed on the same day the parent patent issues can satisfy § 120’s “filed before the patenting” requirement, allowing the continuation to claim the parent’s filing date and preventing prior-art invalidation that would follow from a later effective filing date.


Immersion Corp. v. HTC Corp., 826 F.3d 1357 (Fed. Cir. 2016)