# United States **Court of Appeals**  **for the Federal Circuit**

______________________ MEDTRONIC COREVALVE, LLC, MEDTRONIC CV LUXEMBO URG S.A.R.L.,

AND MEDTRONIC VASCULAR G ALWAY, 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

______________________

M ARTIN R. L UECK , Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, Minnesota, argued for plaintiffs

appellants. With him on the brief was S TACIE E. O BERTS

.

N ICHOLAS G ROOMBRIDGE , Paul

, Weiss, Rif k ind, Wha rton & Garrison LLP, of New York, N ew York, argued for defendants

- appellee s. With him on the brief wereMEDTRONIC COREVALVE , LLC v. EDWARDS
LIFESCIENCES CORP

. 2

C ATHERINE N YARADY , K RIPA R AMAN , B RIAN P. E GAN , J ENNY C. W U , and C HRISTOPHER T ERRANOVA

.

______________________

Before P ROST , P LAGER , and T ARANTO , Circuit Judges.

P ROST , Circuit Judge

. Medtronic CoreValve

, LLC

, the assignee of U.S. P atent No. 7,892,281 (“’281 patent”), appeals f rom the jud gment 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, “E dwards”) of invalidity of c ertain 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. 1 1- CV

961 ( C.D. C al

. Nov. 13, 2012 ) ( Minute Order ) (“ SJ O rder ”). For the reasons set forth below, we affirm.

B ACKGROUND
Medtronic CoreValve

, LLC, Medtronic CV Luxe mbourg S.a.r.l., and Medtronic Vascular Galway Ltd. (co llectively, “Medtronic”) sued Ed wards 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. F iled on January 5, 2009, the ’281 patent d escends 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 p a1 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 COREV ALVE , LLC v. EDWARDS
LIFESCIENCES CORP

. 3

tent, cover page, item 30 & col. 1 ll. 19

- 20, 37

- 39. Howe ver, because French Application 1a is not relevant to the claims asserted against Edwards, the pertinent priority chain 2 for the Asserted C laims has its genesis in French Application No. 00/14028 (“French Application 1b”), filed on O ctober 31, 2000. From there, the chain of priority proceed s 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 App lication 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 su mmary 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 App lication Ser ial No. 10/412,634 (“ U.S. Application 4 ”) was filed. Based on the April 10, 2003 priority date, Edwards also moved t o

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

invalida te the Asserted Claims on summary judgment under 35 U.S.C. § 102 with earlier filed French Applic ation 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 suf fered from no defects and that the Asserted Claims are entitled to a priority date of October 31, 2000, the filing date of French Applic ation 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 . I nstead, Medtronic doubled down on its priority date position because a finding that the ’281 patent is entitled to a n 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 compli ance 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 interve ning application in t he priority chain

— that is, U.S. Appl ication 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 recordMEDTRONIC COREV ALVE , LLC v. EDWARDS
LIFESCIENCES CORP

. 5

of the ’281 patent to be in complete , the district court disallowed the ’281 patent from secur ing the benefit of the filing date of French Application 1b under § 119

. Id. at 6- 7.

For similar reason s , 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 Elec tronics o f Am erica , Inc. , 609 F.3d 1345 (Fed. Cir. 2010), t he district c ourt noted that under § 120, a late r filed application may cla im priority based on an earlier filed application if, inter alia

, the later filed appl ication contains or is amended to contain a specific refe rence to the earlier filed application. SJ Order

, at 6. T o claim priority to International Application 2b, each i ntermediate applicatio n 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 § 12 0. 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. Applic ations 4 and 6 in its priority claim to International Appl ication 2b . T he district court thus found that the ’281 patent cannot claim priority back to International Appl ication 2b under § 120

. Id.
The pa rties did not dispute that the ’281 patent can claim priority to the p atent 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 prior ity 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, t he district court noted that a part from the priority date issue, Medtronic did not rebut Edwards’s evidence that the A sserted C laims 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 f iling date of the ’281 patent to be April 10, 2003

— well after the filing date of the § 102(d) reference and the issuance and publ ication date of the § 102(a) references— the district court held Medtronic’s corresponding patent claims invalid as anticipated. The district court there after granted su mmary 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 appeal s. W e have juris diction under 28 U.S.C. § 1295(a)(1).

D ISCUSSION
S ummary 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). Determin ation 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.3 d 1353, 1359 (Fed. Cir. 2008). This case presents no disputed issues of fact relevant to the district court’s determinations.MEDTRONIC COREV ALVE , 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 f or 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 . T hus, t he parties agree that an affi rmance of the district court’s determination und er e ither § 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.g ov/ default.aspx?fl=2013

- 1117.mp3. Ther efore, we need to examine the district court’s analysis only with respect to one of the two provisions governing prior ity

— we choose § 120.

Section 120 allows a later filed patent application to claim the benefit of an e arlier 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 pe ndency of the application as required by the Director.” 35 U.S.C. § 120. We recently clarified that th e “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 ap plication

m ust be filed by the inventor(s) named in the previously filed application; and (3) the application must be co

pending 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 inte rmediate U.S. Applications 6 and 8 failed to specifically reference the earlier filed applications in the priority chain, t he ’281 patent is not entitled to claim the priority date of International Application 2b under § 12 0. A complete priority chain claiming priority to Intern ational Application 2b under § 120 would have disclosed the following:
The present application (U.S. Application 10) claims priority under 35 U.S.C. § 120 a s a co n ti nuation of U.S. Application Serial No. 1 2 /029,031 ( U.S. Application 8 ), filed February 11, 2008, which is a continuation of U.S. Applic a tion Serial No. 11/352,614 ( U.S. Application 6 ) , filed Febr uary 13, 2006, which is a continuation of U.S. A pplica tion Serial No. 10/412,634 ( U.S. Ap plication 4) , filed April 10, 2003, which is a continuation

- in

part of International Application No. PCT/FR 01/03258 ( International Applica tion 2b ) , filed O ctober 19, 2001

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

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

. 918

. Me d tronic , however, failed to do as thorough a job for the

4 U.S. Applicatio n 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 correc ted and complete priority claim. J. A

. 47.MEDTRONIC COREV ALVE , 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. Applic a tion 6)

. Th e priority chain disclosed in U.S. Applications 6 and 8 insufficiently and incorrectly stated that (1) U.S. Appl ication 6 is a continuation

- in

- part of International Applic ation 2b , omitting any reference to intermediate U.S. Application 4; and (2) U.S. Application 8 is a conti nu ation- 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, a n example of a sufficient disclosure under § 120 would have been as follows for U.S. Applic ation 8:
The present application is a continuation of U.S. Application Serial No. 11/352,614 [U.S. Applic ation 6], filed February 13, 2006, which is a conti nuation of U.S. Applic ation Serial No. 10/412,634 [U.S. Application 4], filed April 10, 2003, which is a continuation

- in

- part of International Applic ation No. PCT/FR 01/03258 [International Applic ation 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. Applic ation 4], filed April 10, 2003, which is a continu ation- in

- part of International Application No. PCT/FR 01/03258 [International Application 2b], filed on Oct ober 19, 2001

.MEDTRONIC COREVALVE , LLC v. EDWARDS
LIFESCIENCES CORP

. 10

that the priority claims in U.S. Applic ations 6 and 8 were defective under § 120 because the phrase “this applic ation” does not expressly identify the correct patent appl ication ( 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) an d 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 applic ation.” 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 re fer 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. Applica tion 4, 6, or 8

. Medtronic’s proposed meaning of “th is application” is an attempt at linguistic gymnas tics and makes little

sense relative to the straightforward, plain lan guage meaning of the phrase. For example

, section 201.11 of the Manual of Patent Examining Procedure (“M.P.E.P.”), which provides instr uctions 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 co ntinuation, 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 andMEDTRONIC COREV ALVE , 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.3 d 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 applic ations with “no break in the chain of priority” and concluded with, “ T his application claims priority to all such

pre vious 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); Zeno n Envtl

. , Inc. v. U.S. Filter Corp. , 506 F.3d 1370, 1383 (Fed. Cir. 20 07 ) (interpreting “[t] his application is a continuation of” to set forth the chain of co

- pending appl ications from the present application)

. Next, Medtronic argues that the meaning of the phrase “this application” should not be rigidly dete rmined , 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. Applic ations 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 Intern ational Applica tion 2b] is [U.S.] Applica tion 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 filedMEDTRONIC COREVALVE , LLC v. EDWARDS
LIFESCIENCES CORP

. 12

SJ Order , at 8 n.10. C iting 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. I t submits that the language of a priority claim should not exist in isolation, but should be interpreted by an interest ed reader who discerns the
context

. We decline to adopt the “reasonable person” test pr oposed by Medtronic to interpret the sufficiency of a prior ity 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 applic ation, 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 num ber),” 37 C.F.R. § 1.78(a)(2)( i).

The reason s for the required precision are apparent

. Medtronic claims that a reasonable person interpreting the phrase “this application” in context would have co ncluded 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 w ould
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 appl ication 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 COREV ALVE , 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 requir ements, would have eliminated U.S. Application 3 as a candidate because it neither claims priority to Intern ational Application 2b nor doe s 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 ascertain ing th e correct priority chain of a patent application that did not contain “specific reference s .”

T he patentee is the person best suited to understand the genealogy and relationship of her applications ; a requirement for her to clearly disclose this informati on 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 plac es the burden o f deciphering a priority claim upon the reader or the public

. Cf. Sampson v. Ampex Corp. , 463 F.2d 1042, 1045 (2d Cir. 1972) (obser ving 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” ). A llocating the responsibility of disclosure through specific reference s 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 chain s, 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 Se ction 120 was necessary to eliminate the burden on the public to engage in long and expensive search of previous appl ications in order to determine the filing date of a later patent.”).
Lastly

, Medtronic’s reliance on MacDermid Printing is similarly mispla ced. Th e 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” la nguage provided by the M.P.E.P

. Id. In contrast to MacDermid Pri nting , 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 determin ation of the p riority 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 , t he 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