Medtronic's Defective Priority Chain Kills Priority Claim: Federal Circuit | Practical Law

Medtronic's Defective Priority Chain Kills Priority Claim: Federal Circuit | Practical Law

In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp, the US Court of Appeals for the Federal Circuit held that Medtronic failed to properly and specifically reference earlier filed applications in the priority chain, cutting off its priority claim and thereby rendering the patent invalid as anticipated.

Medtronic's Defective Priority Chain Kills Priority Claim: Federal Circuit

Practical Law Legal Update 8-555-3685 (Approx. 4 pages)

Medtronic's Defective Priority Chain Kills Priority Claim: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 24 Jan 2014 • USA (National/Federal)
In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp, the US Court of Appeals for the Federal Circuit held that Medtronic failed to properly and specifically reference earlier filed applications in the priority chain, cutting off its priority claim and thereby rendering the patent invalid as anticipated.
On January 22, 2014, the US Court of Appeals for the Federal Circuit issued an opinion in Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., affirming the US District Court for the Central District of California's grant of summary judgment to Edwards Lifesciences Corp., Edwards Lifesciences LLC and Edwards Lifesciences Inc. (collectively Edwards) finding certain claims of the US Patent No. 7,892,281 ('281 patent) invalid due to defects in the patent's chain of priority (No. 2013-1117, (Fed. Cir. Jan. 22, 2014)).
Medtronic CoreValve, LLC, Medtronic CV Luxembourg S.a.r.l. and Medtronic Vascular Galway Ltd. (collectively Medtronic) sued Edwards for infringement of certain claims of the '281 patent. The '281 patent, which was filed on January 5, 2009, descends from several US, international and French patent applications. During litigation, Edwards discovered that the '281 patent's priority chain failed to comply with the requirements of Sections 119 and 120 of the Patent Act and moved for partial summary judgment on the basis that the defects limited the priority date of the '281 patent to April 10, 2003. Medtronic filed a cross-motion seeking summary judgment on the priority date issue arguing there were no priority date defects and that the '281 patent was entitled to a priority date of October 31, 2000. The district court granted Edwards' motion and denied Medtronic's cross-motion, finding the '281 patent was not entitled to a priority date before April 10, 2003 because it failed to satisfy the requirements of either:
  • Section 119, which would have entitled it to claim the October 31, 2000 filing date based on a French application.
  • Section 120, which would have entitled it to claim an October 19, 2001 filing date based on an international application.
In particular, the district court found that:
  • Not every US application in the priority chain properly claimed priority to the October 31, 2000 French application.
  • The defects in the '281 patent's priority chain rendered it unable to claim priority to the October 19, 2001 International application under Section 120.
  • Medtronic broke the priority chain by failing to specifically link each of the subsequent US applications to the October 19, 2001 International application as required by Section 120.
  • The priority date of the '281 patent was no earlier than April 10, 2003, the date of the first US-filed application.
Because the district court set the priority date at April 10, 2003, it held Medtronic's patent invalid as anticipated.
On appeal, the Federal Circuit, noting that Medtronic must demonstrate compliance with both Section 119 and 120 to overcome the district court's final judgment of invalidity, chose to focus its review on the district court's analysis of the Section 120 requirements. For a later-filed patent application to claim the benefit of an earlier filing date, Section 120 requires the application to contain a specific reference to the earlier filed application. Medtronic argued that the two applications filed after the April 10, 2003 US application met the statutory reference requirement because each application stated "this application is also a continuation-in-part of [the International application] filed on October 19, 2001. . . ." Medtronic further argued:
  • The phrase "this application" in the priority claims did not mean each individual application but referred to the April 10, 2003 application.
  • The meaning of the phrase "this application" should be based on what a reasonable person would understand it to disclose.
Taking each argument in turn, the Federal Circuit rejected both arguments:
  • Finding that both the Manual of Patent Examining Procedure and its own opinions routinely use the phrase "this application" in a self-referential manner to mean the present application.
  • Declining to adopt Medtronic's reasonable person test because Medtronic's test ignores:
    • the statutory language of section 120 which clearly requires "a specific reference" to each earlier filed application; and
    • the language of the implementing regulation (37 C.F.R. § 1.78(a)(2)(i)), which requires precise details in priority claims, including the application numbers.
  • Clarifying that the burden rests on the patentee to clearly disclose the relationship between applications rather than relying on the public to determine what could be meant by "this application".
The Federal Circuit's decision is a reminder to patent applicants that they must carefully follow the statutory requirements to get the benefit of the earliest available priority date. Patent applicants should make sure that they comply with all technical requirements in each application and should be aware that they cannot cure an earlier defective priority claim through a later application.