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IP Litigation

Applicant’s failure to clearly reference intermediate applications breaks chain of priority under 35 U.S.C. § 120

January 27, 2014

IP Litigation

Applicant’s failure to clearly reference intermediate applications breaks chain of priority under 35 U.S.C. § 120

January 27, 2014

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Fed. Cir. affirms summary judgment of anticipation based on the priority date to which the asserted claims were entitled.  The chain of priority for the asserted claims was broken because the priority claims of two parent applications omitted reference to earlier parent applications, so that the flawed parent applications failed to make “specific reference” to earlier filed applications as required by 35 U.S.C. § 120.  

Medtronic Corevalve, LLC v. Edwards Lifesciences Corp., ___ F.3d ___ (Fed. Cir. Jan. 22, 2014) (PROST, Plager, Taranto) (C.D. Cal.: Selna) (2 of 5 stars)

The Fed. Cir. rejected the patentee’s argument that the phrase “this application” in the priority claims of the flawed parent applications refer to the earlier, omitted applications rather than “the present application,” slip op. at 10, because the proper meaning (“the present application”) was consistent with a plain reading of the phrase and its usage in both the MPEP and case law.  The Fed Cir refused to adopt a “reasonable person” test for the interpretation of priority claims, because such an approach (i) conflicted with both the statutory requirement of a “specific reference” to earlier applications and the PTO’s implementing regulations, and (ii) “improperly places the burden of deciphering a priority claim upon the reader or the public” when the patent applicant “is the person best suited to understand the genealogy and relationship of her applications.”  Slip op. at 13.

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