In Immersion Corp. v. HTC Corp., 2015-1574, the CAFC confirms the PTO’s position beginning in 1961 (MPEP §211.01(b)) of permitting continuations to be filed on the same day as the parent issues. This became an issue because the continuation statute (35 U.S.C. §120) is less than a model of clarity, saying simply that a continuation must be “filed before the patenting or abandonment of or termination of proceedings” of the parent. In the Patent Office, time is not counted in minutes or hours but in days. There is thus no way to clearly prove compliance with the statute for continuations filed the day the parent issues.
Recognizing that 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”, the CAFC nonetheless adopts the position that, for the “before the patenting” condition to be met, the continuing application may be “filed before the patenting” of the earlier application when “both legal acts, filing and patenting, occur on the same day.”
In large part, the CAFC was concerned with the possible disruption of overturning long-standing PTO practice and the reliance placed on it by practitioners, and this respect and concern for practice is to the court’s credit. And to its credit, the CAFC said as much: the “Supreme Court has long recognized that a ‘longstanding administrative construction,’ at least one on which reliance has been placed, ‘provides a powerful reason for interpreting a statute to support the construction…[h]ere, HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”
However, the CAFC felt the need, as courts often do, of defending what is in fact a public policy decision, however understandable if not rigorously constitutional, with legal reasoning that is less than convincing and that can even be said to be logically counter-intuitive to anyone not indoctrinated and invested in preserving the practices of the third branch of government.
First, the CAFC attempts to diminish the “same day” conundrum by declaring that the “central premise of HTC’s position—that neither of two events on the same day can be ‘before’ the other— is that time under the section 120 language at issue must be measured with a ‘date-level granularity,’” but dismissing this argument because the statute does not actually speak in terms of days or dates. Accordingly, the “prevalence of date-based usage elsewhere in the statute does not by itself determine the meaning of a statutory phrase (like the one at issue here) that does not refer to a unit of time: differences in text often furnish a reason for differences in meaning. To be sure, the usage elsewhere in the Act means that the particular language of section 120 that is at issue here can bear a day-as-unit meaning. That meaning might even be the most natural one to adopt—the one that would fit best with the statute as a whole—if the statute were new and without history, whether pre-enactment or post-enactment. But that is not the posture in which the question is presented [emphasis added].”
So after first admitting that the “most natural” reading would be that continuations must be filed at least one day before their parent issues or goes abandoned, the CAFC had to resort to explaining why it rejected this “most natural” reading. It does so in reference to a 19th century Supreme Court case that did not deal with continuations per se. Nonetheless, according to the CAFC, the Supreme Court in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864) “established the basis for same-day continuations for priority-date purposes.” But that case dealt with the inventor’s withdrawal of a previously filed patent application, on the same day refiling the application with an amended specification. The Court allowed this on the basis that “if a party choose to withdraw his application for a patent…intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law”, giving the earlier application’s priority date to the successor application.
According to the CAFC, Godfrey, dealing with an issue of an amended specification and petitions that are antiquated and that came long before continuation practice was codified by Congress, nevertheless sanctioned same-day continuations in the next century. The CAFC then declared that failure to prove a negative means that Congress adopted Godfrey’s putative “continuation” holding: “none of the legislative history or contemporaneous commentary indicates an intent to alter Godfrey’s long-established result approving same-day continuations for priority-date purposes. And adjudicatory reliance on Godfrey continued after 1952.”
This logically counterintuitive rationalization should be familiar to practitioners, as it is the same method used to maintain the Court’s “abstract idea” jurisprudence from the 19th century despite the ensuing passage of Section 101. In this case, the fact that Congress, despite Godfrey, chose to express the timing requirement using the term “before” instead of “on or before” logically indicates that Congress considered Godfrey and dismissed it. Simply because Congress did not say “before the patenting – and we mean before, not on or before as Godfrey held” does not mean that Congress therefore sanctioned the principle of Godfrey. Instead, Congress used words that “most naturally” expressly foreclose it. Likewise, the fact that Congress passed Section 101 in 1952 permitting patenting any new and useful method, etc. without incorporating the judicial exceptions to patentability can logically be interpreted to mean that Congress discarded the exceptions, since Congress explicitly did not adopt them. Taken to its conclusion, the current judicial approach to discerning, in the lack of a specific case repudiation, Congressional adoption of Court-based law in statutes that on their face do not admit of continuing adherence to the Court-based law amount to regarding as permanent anything the Court does unless Congress explicitly repudiates it in ways that go beyond the clear terms of Congressional statutes.