Federal Circuit, January 22, 2014, 2013-1117

The Federal Circuit upheld the district court's interpretation of 35 U.S.C. § 120, requiring that all intermediate applications in a priority chain must contain a specific reference to the earlier-filed application.

Medtronic was the assignee of U.S. Patent No. 7,892,281 (the "'281 patent"), which recited claims having two separate priority chains. Medtronic brought an infringement action against Edwards based on the '281 patent. The claims asserted against Edwards claimed priority to French Application No. FR 00/14026, filed October 31, 2000, as well as an additional five intermediate applications. During the infringement suit, Edwards realized that two of the intermediate applications did not properly reference the earlier-filed applications in the priority chain. The district court held that the '281 patent could not claim priority back to the French Application, and determined that the '281 patent was anticipated by the French Application. Medtronic appealed to the Federal circuit.

During appeal, Medtronic attempted to argue that language contained in the two intermediate applications at issue contained a proper priority claim. These applications contained the phrase "[t]his application is also a continuation-in-part of [the intermediate PCT application]." This phrase had been copied from an earlier intermediate application and reproduced verbatim in the two applications at issue, which were filed later. However, neither of these two applications contained an additional priority claim to the additional intermediate application.

In its holding, the Federal Circuit determined that the applicant is in the best position to determine the priority of her claims and has a duty to inform the public. If the application does not claim priority to each intermediate application, then the priority chain is incomplete and priority will not be given to previously-filed applications.