Medtronic Corevalue, LLC v. Edwards Lifesciences Corp., No. 2013-1117 (Fed. Cir. Jan. 22, 2014).
The patentee sued the alleged infringer for infringement of the ‘281 patent, which claimed priority from a long line of international and domestic applications and patents. The patentee asserted priority from a French application filed October 31, 2000, and from which numerous international and domestic applications followed. The alleged infringer determined that the ‘281 patent’s priority chain was deficient, and moved for partial summary judgment in order to limit its priority date to April 10, 2003, which was the filing date of the first domestic application. The district court ruled in favor of the alleged infringer. The court then found the ‘281 patent’s claims anticipated by the French application and a subsequent international application. The patentee appealed.
The Federal Circuit affirmed. The court found that the ‘281 patent’s priority chain was indeed defective under 35 USC § 120, because each subsequent application did not “recite every intervening application before it.” Even though the application that ultimately matured into the ‘281 patent contained a full recitation of the preceding applications, two earlier domestic applications did not mention the French or international applications at all. Those domestic applications only contained the phrase “this application is a continuation” of the French and international applications. The court first held that the term “this application” means the “present” application, and then found the statement in the domestic applications to be false. The domestic applications were not a continuation of the French and international applications themselves; instead, they were continuations of an even earlier domestic application. Thus, the requirement of Section 120 had not been met. The court expressly rejected the patentee’s argument that the term “this application” always referred to the application that indeed did claim priority from the French and international applications. The court stated the argument “makes little sense relative to the straightforward, plain language meaning of the phrase.”
The court likewise rejected the argument that any reasonable person could have determined the priority chain, given the filing dates for each application. The court held that Section 120 and its implementing regulations require “a specific reference” to earlier applications with “precise details.” Further, the court believed it made practical sense to require the patentee to clearly lay out the priority chain, because the patentee “is the person best suited to understand the genealogy and relationships of her applications . . . .”
A copy of the opinion can be found here.