There’s The Devil Federal Circuit Reiterates: No Room For Error In Priority Claims

Introduction

The late Chief Judge Giles S. Rich, in an oft-quoted précis of U.S. patent law, remarked that "the name of the game is the claim." Giles S. Rich, "The Extent of the Protection and Interpretation of Claims — American Perspectives," 21 Int'l Rev. Indus. Prop. & Copyright L., 497, 499 (1990). The U.S. Court of Appeals for the Federal Circuit's recent decision in Medtronic CoreValve, LLC v. Edwards Lifesciences Corp. (CoreValve) serves as a reminder that the claims at the beginning of a patent can be just as important as those at the end.

In CoreValve, the Federal Circuit affirmed an invalidity determination, declined to adopt a proposed "reasonable person" test for interpreting the sufficiency of a priority claim, and reiterated that the burden of properly claiming priority rests squarely on the patentee. CoreValve, No. 2013-1117, slip op. at 12-13 (Fed. Cir. Jan. 22, 2014).

The CoreValve Family

At issue in CoreValve was Medtronic's U.S. Patent No. 7,892,281, entitled "Prosthetic Valve for Transluminal Delivery." The '281 patent issued from U.S. Application Serial Number 12/348,892 (referred to in the opinion as "U.S. Application 10"). U.S. Application 10 and, in turn, the '281 patent, included two separate priority chains, only one of which was at issue in CoreValve. The priority chain at issue included a claim to U.S. Application Serial Number 12/029,031 (U.S. Application 8), U.S. Application Serial Number 11/352,614 (U.S. Application 6), U.S. Application Serial Number 10/412,634 (U.S. Application 4), and International Application Number PCT/FR 01/03258 (International Application 2b); International Application 2b claimed priority to French Application Number FR 00/14028 (French Application 1b). Id. at 3.

The Gap

U.S. Application 10 recited a priority chain that included claims to U.S. Applications 6 and 8, each of which included the following priority claim: "[T]his application is also a continuation-in-part of International Application No. PCT/FR 01/03258 [International Application 2b]. . ." Id. at 9. The district court found that the phrase "this application" must mean "the present application" (i.e., U.S. Applications 6 and 8, respectively), and thus the priority claims in U.S. Applications 6 and 8 were defective as not expressly identifying U.S. Application 4 as the continuation-in-part. Id. at 10. The CoreValve panel deduced that Medtronic apparently "recycled the priority claim in [U.S. Application 4] for use in U.S...