MEDTRONIC COREVALVE, LLC, Medtronic CV Luxembourg S.A.R.L., and Medtronic Vascular Galway, Ltd., Plaintiffs-Appellants,
EDWARDS LIFESCIENCES CORPORATION, Edwards Lifesciences LLC, and Edwards Lifesciences (U.S.), Inc., Defendants-Appellees.
Martin R. Lueck, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, MN, argued for plaintiffs-appellants. With him on the brief was Stacie E. Oberts.
Nicholas Groombridge, Paul, Weiss, Rifkind, Wharton & Garrison LLP, of New York, NY, argued for defendants-appellees. With him on the brief were 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.
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" ), filed on November 17, 1999. '281 patent, 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 chain  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 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 ...