Failure to Clearly List Intermediate Applications Breaks Chain of Priority - Medtronic CoreValve, LLC v. Edwards Lifesciences Corp.

by McDermott Will & Emery

Addressing the issue of whether a failure to specifically reference each earlier filed patent applications will result in a loss of claim of priority to the omitted application, the U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment of anticipation based on intervening prior art as a consequence of the priority date to which the asserted claims were entitled.  The Court concluded that the chain of priority for the asserted claims was broken because the priority claims of two parent applications omitted reference to earlier parent applications, so that the flawed parent applications failed to make “specific reference” to earlier filed applications as required by 35 U.S.C. § 120.  Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., Case No.13-1117 (Fed. Cir., Jan. 22, 2014) (Prost, J.).

Medtronic sued Edwards Lifesciences  (Edwards) for infringement of certain claims of  its patent directed towards prosthetic valves. The application for the patent was filed on January 5, 2009 and claimed priority to several U.S. and international patent applications.  Edwards moved for partial summary judgment that the earliest priority date of the asserted claims was April 10, 2003, due to failure to comply with 35 U.S.C. §§ 119 and 120’s requirement to include intermediate applications in the priority claim.  Medtronic filed a cross-motion for partial summary judgment that the asserted claims were entitled to a priority date of October 31, 2000.  After the district court granted Edwards’ motion for summary judgment, holding that the patent was not entitled to the earlier priority date because various applications in the chain of priority did not comply with 35 U.S.C. §§ 119 or 120, Medtronic appealed.

The Federal Circuit addressed the domestic priority issue under 35 U.S.C. § 120, determining whether the patent “contains or is amended to contain a specific reference to the earlier filed application . . . submitted at such time during pendency of the application.”  Federal Circuit precedent stood for the proposition that the “specific reference” requirement of § 120 meant that each intervening application in the priority chain must refer to the prior applications. Although the application in issue properly claimed the entire chain of priority, certain U.S. applications in the chain of priority failed to specifically reference earlier filed applications. At issue were two applications that simply stated “this application is also a continuation-in-part of [the international application].”  Medtronic argued that “this application” referred to an intervening application in the priority chain and thus did not leave out the intervening application.  Edwards argued that “this application” had a plain language meaning and referred to the present application, thus leaving out the intervening application.

The Court agreed with Edwards and held that “this application” is to have its plain language meaning, consistent with M.P.E.P., Section 201.11,  to refer self-referentially to the present application.  Therefore, the two intervening applications failed to identify the ultimate parent application, resulting in a loss of the right to claim priority back to April 10, 2003. As a consequence, the later-filed application for the patent in suit was not entitled to claim priority back to the original October 31, 2000 priority date.

Practice Note:  While the Federal Circuit’s pronouncement is not a new concept, this case is a reminder that patentees will be held accountable for the accuracy and completeness of their  priority claim.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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