Docket No. 2013-1117
PROST, PLAGER, TARANTO
January 22, 2014
Brief Summary: Patent found anticipated by earlier priority application because priority was not correctly claimed under 35 U.S.C. § 120 (did not recite each and every intervening application).
Summary: Medtronic appealed USDC CD CA grant of summary judgment to Edwards of invalidity of certain claims of Medtronic’s US 7,892,281 related to cardiac valves, finding the patent only entitled to a later priority date. The ’281 patent claims priority to a French application (Oct. 31, 2000), a PCT application (Oct. 19, 2001) and four US applications, the earliest having a filing date of April 10, 2003. The DC found that the latest two US applications did not claim priority to the French application as required by 35 U.S.C. § 119 (priority claims based on an earlier filed foreign patent application require that all applications in a priority chain contain a specific reference to the earlier-filed foreign application). It also found defects in the 35 U.S.C. § 120 priority claim because two later filed applications did not recite each and every intervening application “all the way back” to the international application but simply stated “this application is a continuation-in-part of” that application (citing Encyclopedia Brittanica, FC 2010). This was found even though the last US application and the ‘281 patent properly claimed priority to each application in the chain. Thus, the DC concluded that the ‘281 patent could only claim priority to the US application filed on April 10, 2003. As such, the court found the ‘281 patent to be invalid for anticipation by the French application under 35 U.S.C. § 102(d) (“the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country” (foreign application must be filed by the same applicant as in the United States more than 12 months before the effective U.S. filing date, foreign patent or inventor’s certificate must be actually granted before the U.S. filing date (need not be published), and the same invention must be involved)). The FC panel agreed with the DC on the § 120 priority claim determination because “Medtronic…failed to do as thorough a job for the priority claims in intermediate U.S. applications 6 and 8” (it “recycled the priority claim” from application 4 in applications 6 and 8) as for the last application (which issued into the ‘281 patent). Medtronic tried to argue that the phrase “this application” in the priority claims of applications 6 and 8 was meant to refer to application 4 (phrase is not “self-referential from application to application [but] always refers to U.S. Application 4, whether it is being used in U.S. Application 4, 6, or 8.”) This argument was denied as “linguistic gymnastics” and making “little sence relative to the straightforward, plain language meaning of the phrase.” Medtronic also unsuccessfully attempted to argue that the meaning of “’this application’… should be based on what a reasonable person would understand it to disclose within the context” (the opinion citing Accord Sticker Indus., 7th Cir. 1968). The opinion did not address the § 119 issue since Medtronic had to show it was correct on both the § 119 and § 120 issues to overcome the invalidity finding.