United States Court of Appeals 

for the Federal Circuit ______________________ 

MEDTRONIC COREVALVE, LLC,

MEDTRONIC CV LUXEMBOURG S.A.R.L.,

AND MEDTRONIC VASCULAR GALWAY, LTD.,

Plaintiffs-Appellants,

v.

EDWARDS LIFESCIENCES CORPORATION,

EDWARDS LIFESCIENCES LLC,

AND EDWARDS LIFESCIENCES (U.S.), INC.,

Defendants-Appellees.

______________________ 

2013-1117

______________________ 

Appeal from the United States District Court for the 

Central District of California in No. 11-CV-0961, Judge 

James V. Selna.

______________________ 

Decided: January 22, 2014

______________________ 

MARTIN R. LUECK, Robins, Kaplan, Miller & Ciresi 

L.L.P., of Minneapolis, Minnesota, argued for plaintiffsappellants. With him on the brief was STACIE E. OBERTS. 

NICHOLAS GROOMBRIDGE, Paul, Weiss, Rifkind, Wharton & Garrison LLP, of New York, New York, argued for 

defendants-appellees. With him on the brief were
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

2 

CATHERINE NYARADY, KRIPA RAMAN, BRIAN P. EGAN,

JENNY C. WU, and CHRISTOPHER TERRANOVA. 

______________________ 

Before PROST, PLAGER, and TARANTO, Circuit Judges.

PROST, Circuit Judge. 

Medtronic CoreValve, LLC, the assignee of U.S. Patent No. 7,892,281 (“’281 patent”), appeals from the judgment of the United States District Court for the Central 

District of California granting summary judgment to 

Edwards Lifesciences Corp., Edwards Lifesciences LLC, 

and Edwards Lifesciences (U.S.) Inc. (collectively, “Edwards”) of invalidity of certain claims of the ’281 patent. 

The judgment rests on the district court’s grant of partial 

summary judgment that the ’281 patent is limited to a 

priority date of no earlier than April 10, 2003. Medtronic 

CoreValve, LLC v. Edwards Lifesciences Corp., No. 11-CV961 (C.D. Cal. Nov. 13, 2012) (Minute Order) (“SJ Order”). For the reasons set forth below, we affirm.

BACKGROUND

Medtronic CoreValve, LLC, Medtronic CV Luxembourg S.a.r.l., and Medtronic Vascular Galway Ltd. (collectively, “Medtronic”) sued Edwards for infringement of 

claims 3, 4, 7, 12, 14, and 15 of the ’281 patent (“Asserted 

Claims”). The ’281 patent, entitled “Prosthetic Valve for 

Transluminal Delivery,” issued on February 22, 2011. 

Filed on January 5, 2009, the ’281 patent descends from a 

number of United States, international, and French 

patent applications. On its face, the ’281 patent claims 

priority to French Application No. 99/14462 (“French 

Application 1a”),1 filed on November 17, 1999. ’281 pa1 For convenience, we continue to adhere to the 

patent application naming convention used by the parties 

and the district court in the proceedings below.

 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 3

tent, cover page, item 30 & col. 1 ll. 19-20, 37-39. However, because French Application 1a is not relevant to the 

claims asserted against Edwards, the pertinent priority 

chain2 for the Asserted Claims has its genesis in French 

Application No. 00/14028 (“French Application 1b”), filed 

on October 31, 2000. From there, the chain of priority 

proceeds as follows, ending with U.S. Patent Application 

Serial No. 12/348,892 (“U.S. Application 10”), filed on 

January 5, 2009, which matured into the ’281 patent: 

Application Serial Number Filing date

French 

Application 1b

French Application 

No. FR 00/14028 Oct. 31, 2000

International

Application 2b

International Application

No. PCT/FR 01/03258 Oct. 19, 2001

U.S. Application 4 U.S. Patent Application 

Serial No. 10/412,634 Apr. 10, 2003

U.S. Application 6 U.S. Patent Application 

Serial No. 11/352,614 Feb. 13, 2006

U.S. Application 8 U.S. Patent Application 

Serial No. 12/029,031 Feb. 11, 2008

U.S. Application 10 U.S. Patent Application 

Serial No. 12/348,892 Jan. 5, 2009

Over the course of litigation, Edwards became aware

that the ’281 patent’s priority chain suffered from several 

defects for failure to comply with the requirements of 35 

U.S.C. §§ 119 and 120. Edwards moved for partial summary judgment that these defects limited the priority

date of the Asserted Claims to no earlier than April 10, 

2003, the date on which U.S. Patent Application Serial

No. 10/412,634 (“U.S. Application 4”) was filed. Based on 

the April 10, 2003 priority date, Edwards also moved to 

2 The ’281 patent recites two separate priority 

chains, only one of which is relevant in this case.

 
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

4 

invalidate the Asserted Claims on summary judgment 

under 35 U.S.C. § 102 with earlier filed French Application 1b and International Application (Patent Cooperation 

Treaty) No. PCT/FR 01/03258 (“International Application 

2b”). 

Medtronic filed a cross-motion for summary judgment 

on the priority date issue, contending that the priority 

chain of the ’281 patent suffered from no defects and that 

the Asserted Claims are entitled to a priority date of 

October 31, 2000, the filing date of French Application 1b. 

Medtronic did not directly oppose Edwards’s invalidity 

motion on the merits, i.e., contest any facts regarding the 

scope of the alleged invalidating prior art relative to the 

Asserted Claims. Instead, Medtronic doubled down on its 

priority date position because a finding that the ’281 

patent is entitled to an October 31, 2000 priority date 

would defeat Edwards’s invalidity challenge. 

The district court granted Edwards’s motion and 

denied Medtronic’s cross-motion. With respect to priority, 

the court found that the ’281 patent is not entitled to a 

priority date earlier than April 10, 2003 because it was 

neither in compliance with 35 U.S.C. § 119 to claim the 

benefit of the October 31, 2000 filing date of French 

Application 1b, nor in compliance with 35 U.S.C. § 120 to 

claim the benefit of the October 19, 2001 filing date of 

International Application 2b. SJ Order, at 4-8. The 

district court interpreted § 119, which governs priority 

claims based on an earlier filed foreign patent application, 

to require, inter alia, that “all intermediate applications 

in a priority chain contain a specific reference to the 

earlier-filed foreign application” from which priority is 

claimed. Id. at 7. In Medtronic’s case, not every intervening application in the priority chain—that is, U.S. Application 4, U.S. Patent Application Serial No. 11/352,614

(“U.S. Application 6”), and U.S. Patent Application Serial 

No. 12/029,031 (“U.S. Application 8”)—claimed priority to 

French Application 1b. Thus, finding the priority record 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 5

of the ’281 patent to be incomplete, the district court 

disallowed the ’281 patent from securing the benefit of the 

filing date of French Application 1b under § 119. Id. at 6-

7.

 For similar reasons, the district court also found that

the defects in the ’281 patent’s priority chain rendered it

unable to claim priority to International Application 2b

under § 120. Citing Encyclopaedia Britannica, Inc. v. 

Alpine Electronics of America, Inc., 609 F.3d 1345 (Fed. 

Cir. 2010), the district court noted that under § 120, a 

later filed application may claim priority based on an 

earlier filed application if, inter alia, the later filed application contains or is amended to contain a specific reference to the earlier filed application. SJ Order, at 6. To 

claim priority to International Application 2b, each intermediate application must recite every intervening 

application before it all the way back to International 

Application 2b. Id. at 8. Because the specifications of 

U.S. Applications 6 and 8 each simply state that “this 

application is also a continuation-in-part of [International 

Application 2b],” these applications have failed to recite 

the correct chain of priority as required by § 120. Id. In 

particular, Medtronic’s U.S. Application 6 broke the 

priority chain by leaving out U.S. Application 4 in making 

its claim for priority to International Application 2b; 

likewise, U.S. Application 8 failed to link U.S. Applications 4 and 6 in its priority claim to International Application 2b. The district court thus found that the ’281 

patent cannot claim priority back to International Application 2b under § 120. Id. 

The parties did not dispute that the ’281 patent can 

claim priority to the patent application that was next 

along the priority chain, U.S. Application 4, filed on April 

10, 2003, because it recited its priority claim accurately. 

Accordingly, the district court granted partial summary 

judgment in favor of Edwards and set the priority date of 

the ’281 patent to be no earlier than April 10, 2003. Id.
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

6 

With respect to invalidity, the district court noted 

that apart from the priority date issue, Medtronic did not 

rebut Edwards’s evidence that the Asserted Claims of 

the ’281 patent were anticipated by French Application 1b 

under 35 U.S.C. § 102(d), or that asserted claims 3, 4, and 

7 were anticipated by patents that issued from French 

Application 1b and International Application 2b under 

§ 102(a). Id. at 9. Upon finding the effective filing date of 

the ’281 patent to be April 10, 2003—well after the filing 

date of the § 102(d) reference and the issuance and publication date of the § 102(a) references—the district court 

held Medtronic’s corresponding patent claims invalid as 

anticipated. The district court thereafter granted summary judgment of invalidity to Edwards. Id. at 9. 

On November 26, 2012, the district court entered final 

judgment against Medtronic, and adjudged claims 3, 4, 7, 

12, 14, and 15 of the ’281 patent to be invalid under 35 

U.S.C. § 102. Medtronic appeals. We have jurisdiction 

under 28 U.S.C. § 1295(a)(1).

DISCUSSION

Summary judgment is appropriate “if the movant 

shows that there is no genuine dispute as to any material 

fact and the movant is entitled to judgment as a matter of 

law.” Fed. R. Civ. P. 56(a). We review a district court’s 

grant or denial of summary judgment under the law of the 

regional circuit, here the Ninth Circuit. Teva Pharm. 

Indus. v. Astrazeneca Pharm. LP, 661 F.3d 1378, 1381 

(Fed. Cir. 2011). The Ninth Circuit reviews summary 

judgment rulings without deference. Dealertrack, Inc. v. 

Huber, 674 F.3d 1315, 1320 (Fed. Cir. 2012). Determination of a patent’s priority date is purely a question of law 

if the facts underlying that determination are undisputed. 

E.I. du Pont de Nemours & Co. v. MacDermid Printing 

Solutions, LLC, 525 F.3d 1353, 1359 (Fed. Cir. 2008). 

This case presents no disputed issues of fact relevant to 

the district court’s determinations. 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 7

Medtronic’s appeal asks us to determine whether the 

district court erred in holding that the ’281 patent could 

not claim the benefit of an earlier priority date for failure 

to comply with the requirements of both 35 U.S.C. §§ 119

and 120. Medtronic recognizes, however, that it must 

demonstrate compliance with both §§ 119 and 120 to 

overcome the final judgment of invalidity because that

finding rests entirely on the district court’s priority date 

determination. Thus, the parties agree that an affirmance of the district court’s determination under either

§ 119 or § 120 would seal the fate of the ’281 patent. Oral 

Argument at 1:04-2:08, 46:40-47:17, Medtronic CoreValve, 

LLC v. Edwards Lifesciences Corp., No. 2013-1117 (Fed. 

Cir. Oct. 9, 2013), available at http://oralarguments.

cafc.uscourts.gov/default.aspx?fl=2013-1117.mp3. Therefore, we need to examine the district court’s analysis only 

with respect to one of the two provisions governing priority—we choose § 120. 

Section 120 allows a later filed patent application to 

claim the benefit of an earlier filing date in the United 

States if, among other requirements,3 “it contains or is 

amended to contain a specific reference to the earlier filed 

application . . . submitted at such time during the pendency of the application as required by the Director.” 35 

U.S.C. § 120. We recently clarified that the “specific 

reference” requirement mandates “each [intermediate] 

application in the chain of priority to refer to the prior 

3 The other requirements, which are not at issue in 

this appeal, are that (1) the invention described in the 

new application must be disclosed in an application 

previously filed in the United States; (2) the application 

must be filed by the inventor(s) named in the previously 

filed application; and (3) the application must be copending with the earlier application at some point. 35 

U.S.C. § 120; Encyclopaedia Britannica, 609 F.3d at 1349-

50. 

 
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

8 

applications.” Encyclopaedia Britannica, 609 F.3d at 

1352. 

We agree with the district court that because intermediate U.S. Applications 6 and 8 failed to specifically 

reference the earlier filed applications in the priority 

chain, the ’281 patent is not entitled to claim the priority 

date of International Application 2b under § 120. 

A complete priority chain claiming priority to International Application 2b under § 120 would have disclosed 

the following: 

The present application (U.S. Application 10) 

claims priority under 35 U.S.C. § 120 as a continuation of U.S. Application Serial No. 12/029,031 

(U.S. Application 8), filed February 11, 2008, 

which is a continuation of U.S. Application Serial 

No. 11/352,614 (U.S. Application 6), filed February 13, 2006, which is a continuation of U.S. Application Serial No. 10/412,634 (U.S. Application 

4), filed April 10, 2003, which is a continuation-inpart of International Application No. PCT/FR 

01/03258 (International Application 2b), filed October 19, 2001. 

This priority chain was recited in U.S. Application 10, 

which matured into the ’281 patent.4 See J.A. 918. 

Medtronic, however, failed to do as thorough a job for the 

4 U.S. Application 10 did not always disclose such a 

complete priority chain. On May 4, 2009, or four months 

after its filing, Medtronic amended the priority claim in 

U.S. Application 10 to add what had been previously 

omitted, i.e., references to U.S. Applications 4, 6, and 8 

and disclosure of relationships between the intervening 

applications. See J.A. 919. On February 22, 2011, U.S. 

Application 10 issued as the ’281 patent with the corrected and complete priority claim. J.A. 47.

 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 9

priority claims in intermediate U.S. Applications 6 and 8, 

which merely stated, in relevant part: 

[T]his application is also a continuation-in-part of 

International Application No. PCT/FR 01/03258 

[International Application 2b], filed on Oct. 19, 

2001, which was published in a language other 

than English.

J.A. 1054 (U.S. Application 8); J.A. 945 (U.S. Application 

6). The priority chain disclosed in U.S. Applications 6 and 

8 insufficiently and incorrectly stated that (1) U.S. Application 6 is a continuation-in-part of International Application 2b, omitting any reference to intermediate U.S. 

Application 4; and (2) U.S. Application 8 is a continuation-in-part of International Application 2b, omitting 

citations to both intermediate U.S. Applications 6 and 4. 

More is required.5 The district court thus correctly found 

5 In this case, an example of a sufficient disclosure 

under § 120 would have been as follows for U.S. Application 8: 

The present application is a continuation of U.S. 

Application Serial No. 11/352,614 [U.S. Application 6], filed February 13, 2006, which is a continuation of U.S. Application Serial No. 10/412,634 

[U.S. Application 4], filed April 10, 2003, which is 

a continuation-in-part of International Application No. PCT/FR 01/03258 [International Application 2b], filed on October 19, 2001. 

And as follows for U.S. Application 6:

The present application is a continuation of U.S. 

Application Serial No. 10/412,634 [U.S. Application 4], filed April 10, 2003, which is a continuation-in-part of International Application No. 

PCT/FR 01/03258 [International Application 2b], 

filed on October 19, 2001. 

 
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

10 

that the priority claims in U.S. Applications 6 and 8 were 

defective under § 120 because the phrase “this application” does not expressly identify the correct patent application (i.e., U.S. Application 4) as the co-pending 

continuation-in-part of International Application 2b. SJ 

Order, at 8. Instead, it is apparent from reviewing the 

disclosure in U.S. Application 4 that Medtronic recycled

the priority claim in that application for use in U.S. 

Applications 6 and 8. Compare J.A. 904 (U.S. Application 

4) with J.A. 1054 (U.S. Application 8) and J.A. 945 (U.S. 

Application 6).

Medtronic disputes that the phrase “this application” 

in the priority claims of U.S. Applications 6 and 8 must 

mean, as the district court found, “the present application.” SJ Order, at 8. Medtronic asserts that the district 

court incorrectly adopted a plain language reading of the 

phrase, even though Medtronic had intended for the 

phrase to refer to U.S. Application 4. Stated differently, 

Medtronic’s argument is that the phrase “this application” 

is not self-referential from application to application; 

rather, it always refers to U.S. Application 4, whether it is 

being used in U.S. Application 4, 6, or 8. 

Medtronic’s proposed meaning of “this application” is

an attempt at linguistic gymnastics and makes little

sense relative to the straightforward, plain language 

meaning of the phrase. For example, section 201.11 of the

Manual of Patent Examining Procedure (“M.P.E.P.”), 

which provides instructions on claiming the benefit of an 

earlier filing date under 35 U.S.C. §§ 120 and 119(e), 

repeatedly uses the phrase “this application” to refer to 

the present application. See, e.g., M.P.E.P. § 201.11 (8th 

ed. rev. 5, Aug. 2006) (“The relationship between the 

applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior 

nonprovisional application. An example of a proper 

benefit claim is ‘this application is a continuation of prior 

Application No. ---, filed ---.’”). Our opinions also use and 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 

11

interpret “this application” in the self-referential sense to 

mean the “present application.” See, e.g., Santarus, Inc. v. 

Par Pharm., Inc., 694 F.3d 1344, 1360-61 (Fed. Cir. 2012) 

(Newman, J., concurring-in-part and dissenting-in-part) 

(noting that the patent application properly claimed 

priority under § 120 when it disclosed all prior applications with “no break in the chain of priority” and concluded with, “This application claims priority to all such 

previous applications . . . .”); Broadcast Innovation, L.L.C. 

v. Charter Commc’ns, Inc., 420 F.3d 1364, 1366 (Fed. Cir. 

2005) (interpreting “[t]his application is a divisional” to 

set forth the priority chain of the present application);

Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370,

1383 (Fed. Cir. 2007) (interpreting “[t]his application is a 

continuation of” to set forth the chain of co-pending applications from the present application). 

Next, Medtronic argues that the meaning of the 

phrase “this application” should not be rigidly determined, but instead should be based on what a reasonable 

person would understand it to disclose within the context. 

In the context of the ’281 patent, the phrase should be 

interpreted to mean “U.S. Application 4” in U.S. Applications 6 and 8 because, Medtronic asserts, any reasonable 

person “reviewing the priority claims would understand 

that the only application that is identified in the priority 

claims that could be the continuation-in-part [of International Application 2b] is [U.S.] Application 4.” Appellant’s 

Br. 24-25. Medtronic made a similar argument to the 

district court that anyone “of ordinary skill in the art” 

would understand “this application” in U.S. Applications 

6 and 8 to refer to U.S. Application 4 because every other 

patent application in the priority chain was filed too late

to fit the bill.6 The district court rejected this argument. 

6 In lieu of entering the national stage under 35 

U.S.C. § 371, an international application may be claimed 

in a continuation application in the United States if filed 

 
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

12 

SJ Order, at 8 n.10. Citing MacDermid Printing, 525 

F.3d at 1361, Medtronic similarly urges on appeal that 

the test for determining whether a priority claim contains 

the specific reference required by § 120 is whether a 

reasonable person reading the language of the claim 

would be able to determine the relationship between the 

priority applications. It submits that the language of a 

priority claim should not exist in isolation, but should be 

interpreted by an interested reader who discerns the 

context. 

We decline to adopt the “reasonable person” test proposed by Medtronic to interpret the sufficiency of a priority claim under 35 U.S.C. § 120. Medtronic’s proposal runs 

afoul of the language of the statutory provision, which 

requires “a specific reference” to each earlier filed application, as well as the implementing regulation for § 120, 

which requires precise details in priority claims down to

the “application number (consisting of the series code and 

serial number),” 37 C.F.R. § 1.78(a)(2)(i). 

The reasons for the required precision are apparent. 

Medtronic claims that a reasonable person interpreting 

the phrase “this application” in context would have concluded that it unambiguously meant “U.S. Application 4,” 

because that was the only application that could have 

been a continuation-in-part of International Application 

2b based on its filing date. The reasonable person would 

not be so certain, however. As Edwards points out, U.S. 

Application 4’s predecessor, U.S. Patent Application 

Serial No. 10/130,355 (“U.S. Application 3”), filed on 

November 26, 2002, also comes within the thirty month

within thirty months of its priority date. U.S. Application 

4 was the only application along the pertinent priority 

chain (that is, among U.S. Applications 4, 6, 8, and 10) 

that was filed within thirty months of the priority date of 

International Application 2b.

 
MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

 

13

cutoff date and would have been just as reasonable a 

contender as U.S. Application 4 to be the application to 

which “this application” referred. Ultimately, a closer 

look at the ’281 patent’s complicated priority recitations, 

as well as an understanding of § 120’s disclosure requirements, would have eliminated U.S. Application 3 as a 

candidate because it neither claims priority to International Application 2b nor does it belong to the same 

priority chain as the Asserted Claims.7 However, such a 

conclusion would come to light only if the reasonable 

person had a sufficient understanding of prosecution 

procedure and litigation subject matter. These nuances 

demonstrate the difficulty in ascertaining the correct 

priority chain of a patent application that did not contain 

“specific references.” 

The patentee is the person best suited to understand 

the genealogy and relationship of her applications; a 

requirement for her to clearly disclose this information 

should present no hardship. Accord Sticker Indus. Supply 

Corp. v. Blaw-Knox Co., 405 F.2d 90, 93 (7th Cir. 1968). 

On the contrary, Medtronic’s “reasonable person” test 

improperly places the burden of deciphering a priority 

claim upon the reader or the public. Cf. Sampson v. 

Ampex Corp., 463 F.2d 1042, 1045 (2d Cir. 1972) (observing that the “specific reference” requirement under § 120 

has the purpose of ensuring that someone examining a 

patent claiming the benefit of an earlier filed application 

is able to determine the priority date with “a minimum of 

effort”). Allocating the responsibility of disclosure 

through specific references to the patentee eliminates the 

inefficiencies associated with having the public expend 

efforts to unearth information when such information is 

readily available to the patentee. See Sticker Indus., 405 

7 As mentioned previously, the ’281 patent discloses 

two priority chains, only one of which pertains to the 

Asserted Claims in this case.

 
 MEDTRONIC COREVALVE, LLC v. EDWARDS 

LIFESCIENCES CORP. 

14 

F.2d at 93 (“Congress may well have thought that Section 

120 was necessary to eliminate the burden on the public 

to engage in long and expensive search of previous applications in order to determine the filing date of a later 

patent.”).

Lastly, Medtronic’s reliance on MacDermid Printing is 

similarly misplaced. The issue in that case was whether a 

reference in a non-provisional application was sufficient 

to claim priority to a provisional application under 35 

U.S.C. § 119(e). MacDermid Printing, 525 F.3d at 1361. 

Although the patentee in MacDermid Printing correctly 

disclosed and identified the relationship between the two 

applications, it did so without using the phrase “claims 

the benefit of,” an example of acceptable “priority” language provided by the M.P.E.P. Id. In contrast to MacDermid Printing, where certain magic words were not 

used but the priority claim was otherwise correct, here 

Medtronic used language suggested by the M.P.E.P. in a 

contrary manner, and additionally failed to disclose the 

correct relationships between the applications at issue. 

We have considered Medtronic’s remaining arguments 

and do not find them persuasive. Summary judgment of 

invalidity in this case was predicated on the determination of the priority date of the ’281 patent. Because 

Medtronic failed to specifically reference each earlier filed 

application in the intervening applications in the chain of 

priority for the ’281 patent under 35 U.S.C. § 120, the 

district court was correct to limit the priority date of the 

patent to no earlier than April 10, 2003 and thereafter 

find the Asserted Claims invalid as anticipated. For the 

foregoing reasons, the judgment of the district court is

affirmed.

AFFIRMED