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Patent Invalidity Based on Non-Compliant Claims of Priority
February 03, 2014

InMedtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date. Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent. The U.S. District Court of the Central District of California granted summary judgment of invalidity to Edwards, holding the asserted claims of '281 patent were invalid as not being entitled to a priority date earlier than April 10, 2003. The Federal Circuit affirmed the district court’s holding.

The '281 patent was filed on January 5, 2009 and issued on February 22, 2011. It descended from a family of patents claiming priority to U.S., international, and French applications. On its face, the '281 patent claims priority to French Application No. 99/14462 filed on November 17, 1999. However, the asserted claims had proper priority to French Application No. 00/14028, filed on October 31, 2000. The pertinent chain of priority was summarized by the Federal Circuit as follows:

Application

Serial Number

Filing Date

French App. 1b

French App. No. FR 00/14028

Oct. 31, 2000

International App. 2b

International App. No. PCT/FR01/03258

Oct. 19, 2001

U.S. App. 4

U.S. Patent App. Serial No. 10/412,634

Apr. 10, 2003

US. App. 6

U.S. Patent App. Serial No. 11/352,614

Feb. 13, 2006

U.S. App. 8

U.S. Patent App. Serial No. 12/029,031

Feb. 11, 2008

U.S. App. 10

U.S. Patent App. Serial No. 12/348,892

Jan. 5, 2009

Through the litigation, Edwards realized that the '281 patent had several defects in its chain of priority, including failure to comply with 35 U.S.C. §§ 119 and 120. Edwards moved for summary judgment of invalidity of the asserted claims, on the basis "that these defects limited the priority date of the Asserted Claims to no earlier than April 10, 2003." Based on the April 10, 2003 priority date, Edwards also moved to invalidate the Asserted Claims on summary judgment under 35 U.S.C. § 102 with earlier filed French Application [No. 00/14028] and [it’s related PCT Application.

The district court granted Edwards motion. The court's decision rested on it finding that the claims to priority under §§ 119 and 120 were not in compliance with the statutory sections. The district court noted that § 119 requires "that 'all intermediate applications in a priority chain contain a specific reference to the earlier-filed foreign application' from which priority is claimed." Not every one of the intervening Medtronic applications in the priority chain did so. Thus, the court held that the '281 patent was not in compliance with § 119 and priority could not be established any earlier than at least April 10, 2003. With respect to § 120, the court "noted that under § 120, a later filed application may claim priority based on an earlier field application if, inter alia, the later filed application contains or is amended to contain a specific reference to the earlier filed application." The district court found that applications within the priority chain failed to comply with these requirements of § 120. As such, the court held that the '281 patent was not in compliance with § 120 and priority could not be established any earlier than at least April 10, 2003.

Medtronic appealed the district court's decision. The Federal Circuit affirmed the district court's grant of summary judgment.

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