Categories: Priority
Date: Jan 24, 2014
Title: Medtronic Corevalve, LLC v. Edwards Lifesciences Corp.: Failure to List Intermediate Application Limits Priority
| Title | Medtronic Corevalve, LLC v. Edwards Lifesciences Corp., No. 2013-1117 (Fed. Cir. Jan. 22, 2013). | ||
| Issue | Medtronic’s appeal asks us to determine whether the district court erred in holding that the ’281 patent could not claim the benefit of an earlier priority date for failure to comply with the requirements of both 35 U.S.C. §§ 119 and 120 [for failure to include intermediate applications in the priority claim]. Medtronic Corevalve, LLC at *7 (text added). | ||
| Holding | Because Medtronic failed to specifically reference each earlier filed application in the intervening applications in the chain of priority for the ’281 patent under 35 U.S.C. § 120, the district court was correct to limit the priority date of the patent to no earlier than April 10, 2003 and thereafter find the Asserted Claims invalid as anticipated. Id. at *14. | ||
| Procedural History | Medtronic CoreValve, LLC, the assignee of U.S. Pa- tent No. 7,892,281 (“’281 patent”), appeals from the judgment of the United States District Court for the Central District of California granting summary judgment to Edwards Lifesciences Corp., Edwards Lifesciences LLC, and Edwards Lifesciences (U.S.) Inc. (collectively, “Ed- wards”) of invalidity of certain claims of the ’281 patent. The judgment rests on the district court’s grant of partial summary judgment that the ’281 patent is limited to a priority date of no earlier than April 10, 2003. Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 11-CV- 961 (C.D. Cal. Nov. 13, 2012) (Minute Order) (“SJ Order”). Medtronic Corevalve, LLC at *2. | ||
| Legal Reasoning (Prost, Plager, Taranto) | |||
| Background | |||
Chain of Priority Medtronic Corevalve, LLC at *3. | Application | Serial Number | Filing date |
| French Application 1b | French Application No. FR 00/14028 | 10/31/2000 | |
| International Application 2b | International Application No. PCT/FR 01/03258 | 10/19/2001 | |
| U.S. Application 4 | U.S. Patent Application Serial No. 10/412,634 | 4/10/2003 | |
| U.S. Application 6 | U.S. Patent Application Serial No. 11/352,614 | 2/13/2006 | |
| U.S. Application 8 | U.S. Patent Application Serial No. 12/029,031 | 2/11/2008 | |
| U.S. Application 10 | U.S. Patent Application Serial No. 12/348,892 | 1/5/2009 | |
| Failure to Mention Intermediate Application in Chain of Priority terminates Priority to Original Application | |||
| Legal Standard: § 120 | Section 120 allows a later filed patent application to 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.” 35 U.S.C. § 120. We recently clarified that the “specific reference” requirement mandates “each [intermediate] application in the chain of priority to refer to the prior applications.” Medtronic Corevalve, LLC at *8 (internal citations omitted). | ||
Omission of Intermediate Applications | Medtronic […] failed to do as thorough a job for the priority claims in intermediate U.S. Applications 6 and 8, which merely stated, in relevant part: [T]his application is also a continuation-in-part of International Application No. PCT/FR 01/03258 [International Application 2b], filed on Oct. 19, 2001, which was published in a language other than English. J.A. 1054 (U.S. Application 8); J.A. 945 (U.S. Application 6). The priority chain disclosed in 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 continua- tion-in-part of International Application 2b, omitting citations to both intermediate U.S. Applications 6 and 4. More is required. Id. at *8-9. | ||
| The district court thus correctly found that the priority claims in U.S. Applications 6 and 8 were defective under § 120 because the phrase “this application” does not expressly identify the correct patent appli- cation (i.e., U.S. Application 4) as the co-pending continuation-in-part of International Application 2b. SJ Order, at 8. Instead, it is apparent from reviewing the disclosure in U.S. Application 4 that Medtronic recycled the priority claim in that application for use in U.S. Applications 6 and 8. Id. at *9-10. | |||
| Conclusion | |||
| For the foregoing reasons, the judgment of the district court is affirmed. Medtronic Corevalve, LLC at *14. | |||
| Editor Note | |||
| The Court did not mention the Patent Law Treaty in its decision | |||