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Medtronic Corevalve, L.L.C. v Edwards Lifesciences Corporation

Summarized by: 

Date Filed: 01-22-2014
Case #: 2013-1117
United States Court of Appeals for the Federal Circuit
Full Text Opinion: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1117.Opinion.1-17-2014.1.PDF
LexisNxis Link: 2014 U.S. App. LEXIS 1152
Westlaw Link: 2014 WL 229081

Patents: Invalidity : Priority was not established when an applicant did not list all previous amended and foreign applications on every intervening application.

Opinion (Prost): Medtronic Corevalve, L.L.C. (“Medtronic”) appealed the United States District Court for the Central District of California’s grant of summary judgment to Edwards Lifesciences Corporation (“Edwards”) for invalidity.  The District Court granted summary judgment as a result of Medtronic’s non-compliance with 35 U.S.C. § 119 which requires that every intervening application used to establish priority must make specific reference to every prior amended or foreign application which was included in the chain. Proper specific reference allows the party to claim priority based on prior amended or foreign patents in 35 U.S.C. §120. The Court of Appeals for the Federal Circuit previously held that “’specific reference’ mandates each [intermediate] application in the chain of priority to refer to the prior application.” The District Court found that two of Medtronic’s previous applications failed to make ‘specific reference’ to the foreign application which was the basis for its priority claim, and as a result failed to preserve its priority under 35 U.S.C. §120. Medtronic’s argument that a “reasonable PHOSITA” would unambiguously determine that its language referenced the prior foreign patent was rejected. The District Court held that to allow a reasonability test would improperly place the burden of determining priority on the public. It should instead be placed on the applicant, who has the best knowledge of relationship of their applications. The ruling of the District Court was AFFIRMED.