United States: Intervening Applications Must Specifically Reference All Earlier Applications In Chain Of Priority To Comply With 35 U.S.C. § 120

In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 13-1117 (Fed. Cir. Jan. 22, 2014), the Federal Circuit affirmed the district court's finding that U.S. Patent No. 7,892,281 ("the '281 patent") was not entitled to an earlier priority date because it failed to comply with the requirements of 35 U.S.C. § 120 and that the asserted claims were therefore invalid as anticipated.

Medtronic CoreValve, LLC, Medtronic CV Luxembourg S.a.r.l., and Medtronic Vascular Galway Ltd. (collectively "Medtronic") sued Edwards Lifesciences Corp., Edwards Lifesciences LLC, and Edwards Lifesciences (U.S.) Inc. (collectively "Edwards") for infringement of claims 3, 4, 7, 12, 14, and 15 (collectively "the Asserted Claims") of the '281 patent.  The '281 patent issued on February 22, 2011, from U.S. Patent Application No. 12/348,892 ("U.S. Application 10") and claims priority on its face to French Application No. 99/14462 ("French Application 1a").  The Asserted Claims, however, are unrelated to French Application 1a and derive instead from French Application No. 00/14028 ("French Application 1b") through the following priority chain:  

On Edwards's motion for partial SJ, the district court found that the Asserted Claims were entitled to a priority date no earlier than April 10, 2003, the filing date of U.S. Application 4, because Medtronic failed to comply with the requirements of 35 U.S.C. §§ 119 and 120.  Accordingly, the district court granted Edwards's motion for SJ that the Asserted Claims were anticipated by French Application 1b under 35 U.S.C. § 102 and entered final judgment for Edwards.

Medtronic timely appealed, arguing that there was no defect in the '281 patent's priority chain, that the Asserted Claims were therefore entitled to a priority date of at least October 31, 2000, and that, by virtue of this earlier priority date, the Asserted Claims were not invalid as anticipated.  On appeal, the Federal Circuit first observed that Medtronic had to successfully prove that the '281 patent complied with both §§ 119 and 120 to be entitled to the earlier priority date and avoid anticipation.

Electing to analyze the '281 patent's compliance with § 120 first, the Court held that because two intervening applications in the '281 patent's priority chain—U.S. Applications 6 and 8—failed to specifically reference earlier-filed applications in the same chain, as required by the Court's interpretation of § 120 in Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., 609 F.3d 1345 (Fed. Cir. 2010), the '281 patent was not entitled to the filing date of International Application 2b.  A later-filed patent application may claim the benefit of an earlier filing date in the United States if, among other requirements, "it contains or is amended to contain a specific reference to the earlier filed application . . . submitted at such time during the pendency of the application as required by the Director."  Slip op. at 7 (quoting 35 U.S.C. § 120).  Specifically, the Court observed that by only reciting that "[t]his application is also a continuation-in-part of International Application No. PCT/FR 01/03258 [International Application 2b]," the priority claims in both U.S. Applications 6 and 8 "insufficiently and incorrectly stated that (1) U.S. Application 6 is a continuation-in-part of International Application 2b, omitting any reference to intermediate U.S. Application 4; and (2) U.S. Application 8 is a continuation-in-part of International Application 2b, omitting citations to both intermediate U.S. Applications 6 and 4."  Id. at 9.

Dismissing Medtronic's argument that "this application" as used in the priority claims of U.S. Applications 6 and 8 actually referred to U.S. Application 4 as "an attempt at linguistic gymnastics," id.  at 10, the Court also declined Medtronic's invitation to apply a "reasonable person" standard to determine the sufficiency of priority claims under § 120.  The Court reasoned that a "reasonable person" standard would conflict with both § 120's "specific reference" language and with the regulation implementing § 120, 37 C.F.R. § 1.78(a)(2)(i), "which requires precise details in priority claims down to the 'application number (consisting of the series code and serial number).'"  Id. at 12.  Moreover, adopting a "reasonable person" standard would improperly place the burden of interpreting priority claims on the reader or the public.  As the Court observed, "[t]he patentee is the person best suited to understand the genealogy and relationship of her applications; a requirement for her to clearly disclose this information should present no hardship."  Id.  at 13. 

Finding Medtronic's reliance on E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, LLC, 525 F.3d 1353 (Fed. Cir. 2008), misplaced, the Federal Circuit explained that, unlike MacDermid Printing, "where certain magic words were not used but the priority claim was otherwise correct, . . . Medtronic used language suggested by the M.P.E.P. in a contrary manner, and additionally failed to disclose the correct relationships between the applications at issue."  Slip op. at 14.  The Court then found Medtronic's remaining arguments unpersuasive.

By concluding that the '281 patent failed to comply with § 120 because the intervening applications in the priority chain failed to specifically reference all earlier-filed applications in the chain of priority, the Federal Circuit affirmed the district court's finding that the priority date of the '281 patent was no earlier than April 10, 2003, and, thus, all of the Asserted Claims were anticipated by French Application 1b.

Judges: Prost (author), Plager, Taranto

[Appealed from C.D. Cal., Judge Selna]

This article previously appeared in Last Month at the Federal Circuit, February 2014.

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