741 F.3d 1359
Fed. Cir.2014Background
- Medtronic sued Edwards for infringement of six claims of U.S. Patent No. 7,892,281 (the ’281 patent). The patent traces to a series of French, international (PCT), and U.S. applications; the disputed priority chain begins with French Application 1b (Oct. 31, 2000) and includes International Application 2b (Oct. 19, 2001) and several intervening U.S. applications, ending with U.S. Application 10 (filed Jan. 5, 2009) that issued as the ’281 patent.
- Edwards moved for partial summary judgment that defects in the priority chain limited the patent’s effective priority date to no earlier than April 10, 2003 (U.S. Application 4), and on that basis moved to invalidate the asserted claims as anticipated by earlier-filed references.
- The district court granted summary judgment that the ’281 patent could not claim priority earlier than April 10, 2003 because intermediate U.S. applications (U.S. Applications 6 and 8) failed to contain the "specific reference" to earlier applications required by 35 U.S.C. § 120 (and similarly failed § 119 requirements), breaking the priority chain to International Application 2b and French Application 1b.
- Because the effective filing date was April 10, 2003, the district court held the asserted claims anticipated under 35 U.S.C. § 102 by prior French and PCT-related references and entered final judgment of invalidity.
- Medtronic appealed, arguing the intermediate priority statements (which used the phrase "this application") were sufficient and that, in context, a reasonable reader would understand them to reference the proper earlier applications.
- The Federal Circuit affirmed, focusing on § 120: each intermediate application must specifically identify earlier applications in the chain; generalized or recycled language like "this application" that fails to identify the correct intervening applications is defective and breaks the chain.
Issues
| Issue | Plaintiff's Argument (Medtronic) | Defendant's Argument (Edwards) | Held |
|---|---|---|---|
| Whether the ’281 patent can claim priority to International Application 2b / French Application 1b under 35 U.S.C. § 120 and § 119 | The phrase "this application" in intermediate U.S. applications should be read in context to refer back to U.S. Application 4 (and thus preserve the full priority chain to 2000/2001). | Intermediate applications failed to give the "specific reference" required by statute and regulation; generic language breaks the chain. | Held: Priority cannot be claimed earlier than April 10, 2003 because U.S. Applications 6 and 8 did not specifically reference the intervening applications required by § 120, breaking the chain. |
| Whether a "reasonable person/context" test should excuse non-specific priority language | A reasonable person familiar with the chain would understand which application "this application" referred to; context cures the wording. | The statute and regulation require specific identification; burden to disclose lies with the patentee, not the public. | Held: Rejected the reasonable-person test; specificity is required and the patentee must disclose the chain. |
| Whether M.P.E.P. guidance or precedent permits flexible wording for priority claims | Medtronic relied on prosecutorial/practice context and analogies to prior cases allowing non-magic-word formulations. | Edwards argued M.P.E.P. treats "this application" as self-referential and § 120 demands precision (application numbers, etc.). | Held: The court applied § 120 and M.P.E.P. as supporting a self-referential reading of "this application"; flexible wording here was insufficient. |
| Whether the defective priority finding required invalidation of the asserted claims under § 102 | Medtronic argued priority should survive, avoiding the § 102 references. | Edwards argued earlier-filed French/PCT materials anticipate the claims once priority is limited to 2003. | Held: With priority limited to 2003, asserted claims are anticipated by earlier references and thus invalid; summary judgment of invalidity affirmed. |
Key Cases Cited
- Encyclopaedia Britannica, Inc. v. Alpine Electronics of Am., 609 F.3d 1345 (Fed. Cir.) ("specific reference" requirement under § 120 requires each intermediate application to refer to prior applications)
- E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, 525 F.3d 1353 (Fed. Cir.) (priority-date determination is legal when underlying facts are undisputed)
- Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir.) (uses "this application" as self-referential in priority statements)
- Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc., 420 F.3d 1364 (Fed. Cir.) (interpreting "this application is a divisional" to set forth present-application priority chain)
- Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir.) (treating "this application is a continuation" as referring to the present application)
- Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir.) (summary judgment review without deference)
- Teva Pharm. Indus. v. Astrazeneca Pharm. LP, 661 F.3d 1378 (Fed. Cir.) (regional circuit law applies to summary judgment procedural review)