United States Court of Appeals for the Federal Circuit
2006-1434
BOSTON SCIENTIFIC SCIMED, INC.
(formerly known as Scimed Life Systems, Inc.),
Plaintiff-Appellant,
v.
MEDTRONIC VASCULAR, Inc.
(also known as Medtronic AVE, Inc.),
Defendant-Appellee,
and
ERIC C. MARTIN,
Defendant.
Gregory A. Castanias, Jones Day, of Washington, DC, argued for the plaintiff-
appellant. With him on the brief were Gidon D. Stern, Thomas E. Friebel, Catharina J.
Chin Eng, and Brent P. Ray, of New York, New York.
Brian E. Ferguson, McDermott Will & Emery LLP, of Washington, DC, argued for
the defendant-appellee. On the brief were Paul Devinsky, John R. Fuisz, Stephen K.
Shahida, and Natalia V. Blinkova. Of counsel were Joel M. Freed and Amanda E. Koenig.
Appealed from: United States District Court for the District of Columbia
Judge Richard J. Leon
United States Court of Appeals for the Federal Circuit
2006-1434
BOSTON SCIENTIFIC SCIMED, INC. (formerly known as Scimed Life Systems, Inc.),
Plaintiff-Appellant,
v.
MEDTRONIC VASCULAR, Inc. (also known as Medtronic AVE, Inc.),
Defendant-Appellee,
and
ERIC C. MARTIN,
Defendant.
______________________
DECIDED: August 8, 2007
_______________________
Before MAYER, BRYSON and PROST, Circuit Judges.
MAYER, Circuit Judge.
Boston Scientific Scimed, Inc. (“Scimed”) ∗ appeals the district court’s grant of
summary judgment affirming the Board of Patent Appeals and Interferences’ final
decision, which denied Scimed the priority benefit of an earlier-filed European patent
application for the subject matter at issue in Patent Interference Number 104,192 (“the
* Plaintiff-appellant Boston Scientific Scimed, Inc., was formerly known as
Scimed Life Systems, Inc., and will be referred to throughout this opinion as “Scimed.”
’192 interference”). Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., 486 F. Supp. 2d
60 (D.D.C. 2006). We affirm.
Background
This appeal stems from an interference proceeding before the United States
Patent and Trademark Office Board of Patent Appeals and Interferences. Scimed and
Medtronic Vascular, Inc. (“Medtronic”) are each assignees of different United States
patent applications covering the same invention. Andrew Cragg and Michael Dake
(collectively “Cragg”) filed patent application 08/461,402 (“the ’402 application”) for the
invention in question on June 5, 1995. Cragg then assigned all rights in the ’402
application to Boston Scientific Technology, Inc., which later merged into Scimed, the
plaintiff-appellant and current legal owner of the ’402 application. Also on June 5, 1995,
Thomas J. Fogarty, Timothy J. Ryan, and Kirsten Freislinger (collectively “Fogarty”) filed
patent application 08/463,836 (“the ’836 application”) for the same invention. Fogarty
assigned their rights in the ’836 application to a company that eventually became
Medtronic, the defendant-appellee and current legal owner of the ’836 application. Eric
Martin, a third-party to the instant appeal, owns U.S. Patent No. 5,575,817 (the “Martin
patent” or “’817 patent”), which resulted from an application filed on August 19, 1994.
On April 23, 1998, the board declared an interference between Scimed’s ’402
application, Medtronic’s ’836 application, and Martin’s ’817 patent. The purpose of the
interference was to determine which party had priority of inventorship, thereby entitling it
to the invention as set forth in the sole count of the interference:
An apparatus for reinforcing a bifurcated lumen comprising:
a first section, configured to be positioned within the lumen,
comprising:
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an upper limb, configured to fit within the lumen upstream of the
bifurcation;
a first lower limb, configured to extend into the first leg of said
bifurcation when said first section is positioned in the lumen, and
a second lower limb, shorter than said first lower limb, and
configured so that when said first section is positioned in the lumen, said
second lower limb does not extend into a second leg of said bifurcation,
and further comprising
a second section configured to be positioned separately within the
lumen and joined to said second lower limb of the first section, effectively
extending said second lower limb into said second leg of said bifurcation.
Cragg v. Martin v. Fogarty, Patent Interference No. 104,192, Paper No. 187, 2001 WL
1339890 at *2-3 (B.P.A.I. July 21, 2001) (“Final Interference Decision”).
The board initially gave Cragg the benefit of the filing dates of two European
patent applications filed by MinTec SARL (“MinTec”), a French company. The earlier of
these dates was February 9, 1994. At the time these European applications were filed,
no legal relationship existed between MinTec and Cragg, nor was MinTec acting on
behalf of Cragg. Fogerty was granted the benefit of the filing date of U.S. patent
application 08/255,681, which was June 8, 1994. Martin was accorded benefit of the
application that led to the ’817 patent, which was filed on August 19, 1994. Accordingly,
the PTO initially designated Cragg as the senior party in the interference.
Fogarty responded by filing a motion attacking the priority benefit granted to
Cragg. The board granted the motion, declaring Fogarty the senior party in the
interference. After Cragg protested this decision, the board issued a final decision
denying his request to be declared the senior party. The board ruled that Cragg was
not entitled to priority benefit under 35 U.S.C. § 119 because neither Cragg nor Dake
had assigned their rights to MinTec until after it had filed the European applications.
Final Interference Decision, 2001 WL 1339890, at *5.
2006-1434 3
Scimed, the assignee of Cragg’s U.S. patent application, then brought an action
in the United States District Court for the District of Columbia challenging the board’s
final decision in the ’192 interference. The district court affirmed the board’s final
decision, Scimed, 486 F. Supp. 2d at 61, and Scimed filed this appeal. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
Discussion
We review a district court’s grant of summary judgment de novo. Monsanto Co.
v. Scruggs, 459 F.3d 1328, 1344 (Fed. Cir. 2006). We also apply a de novo standard
when reviewing questions of law, including a trial court’s interpretation of statutory
language. Pitsker v. Office of Pers. Mgmt., 234 F.3d 1378, 1381 (Fed. Cir. 2000).
At issue here is whether 35 U.S.C. § 119(a)** permits an applicant for a United
States patent to benefit from the priority of a foreign application previously filed by an
entity that was not acting on behalf of the U.S. applicant at the time of filing. We hold
that it does not.
A similar issue was addressed by the Court of Customs and Patent Appeals in
Vogel v. Jones, 486 F.2d 1068 (CCPA 1973), which, to the extent relevant here, is
binding upon us, South Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982)
** 35 U.S.C. § 119(a) reads in relevant part:
An application for patent for an invention filed in this country by any
person who has, or whose legal representatives or assigns have,
previously regularly filed an application for a patent for the same invention
in a foreign country which affords similar privileges in the case of
applications filed in the United States or to citizens of the United States, or
in a WTO member country, shall have the same effect as the same
application would have if filed in this country on the date on which the
application for patent for the same invention was first filed in such foreign
country, if the application in this country is filed within twelve months from
the earliest date on which such foreign application was filed . . . .
2006-1434 4
(en banc). According to Vogel, Ҥ 119 gives rise to a right of priority that is personal to
the United States applicant.” 486 F.2d at 1072. Due to the personal nature of this right,
an applicant for a U.S. patent may only benefit from the priority of a foreign application if
it was filed by the U.S. applicant or “on his behalf.” Id.
Scimed argues that Vogel does not require the foreign applicant to have been
acting on behalf of the U.S. applicant at the time the foreign application was filed. It
points to the following passage in support:
This practice [of allowing a U.S. applicant to claim priority from a foreign
application filed by someone else] arose because it was recognized that in
many foreign countries, unlike in the United States, the actual applicant for
a patent can be other than the inventor, e.g., an assignee. In light of this,
we regard the language in § 119 referring to legal representatives and
assigns to merely represent a codification of the actual practice under [the
predecessor statute to § 119]. Since under United States law an
application for patent must be made by the inventor, that practice was
based on the requirement that the foreign application, regardless of the
identity of the applicant, must have been filed for an invention actually
made by the inventive entity seeking to rely upon it for priority purposes.
We think § 119 must be construed to the same end.
Id. (footnote omitted). Scimed attempts to construe this language as permitting a U.S.
applicant to benefit from a foreign application’s earlier filing date whenever “the
invention described in the foreign application [is the same] one actually made by the
U.S. applicant,” “‘regardless of the identity of the applicant’ of the foreign application.”
According to its interpretation, “the Vogel court did not hold that the foreign application
must have been filed by a person who was an assignee or legal representative of the
U.S. inventor at the time the foreign application was filed, or that the foreign application
must have been filed on his behalf in order for there to be priority benefit.” We
disagree.
2006-1434 5
Vogel clearly held that the above-quoted passage “means that an applicant for a
United States patent can rely for priority on the ‘first filed’ application by an assignee on
his behalf.” Id. (emphasis added). Moreover, “the existence of an application made by
[the inventor’s] assignee in a foreign country on behalf of one other than the United
States inventor is irrelevant to his right of priority based on applications made on his
behalf.” Id. In other words, while the foreign application must obviously be for the same
invention and may be filed by someone other than the inventor, section 119(a) also
requires that a nexus exist between the inventor and the foreign applicant at the time
the foreign application was filed. Indeed, as a matter of pure logic, an entity could not
have filed a foreign application “on behalf of” an inventor without the inventor’s
knowledge or consent; that the foreign application may have been filed in accordance
with the laws of the country in which it was filed has no bearing here. Therefore, to the
extent that there may have been any uncertainty or ambiguity in Vogel, we now
explicitly hold that a foreign application may only form the basis for priority under section
119(a) if that application was filed by either the U.S. applicant himself, or by someone
acting on his behalf at the time the foreign application was filed.
Scimed also contends that the district court erred by precluding it from presenting
evidence relating to theories of constructive trust and equitable assignment. A party
may present new evidence to the trial court when appealing a board decision in an
interference proceeding. Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir.
1994). A party may not, however, advance new legal theories at the trial court level,
even if the overarching legal issue was presented below. See id. (“[A]n action under [35
U.S.C.] § 146 is essentially a proceeding to review the action of the Board. . . . [T]he
2006-1434 6
parties to an interference must make a complete presentation of the issues at the Board
level so that the interference is efficient and not wasteful of administrative and judicial
resources.”). Failure to advance legal theories before the board constitutes a failure to
“make a complete presentation of the issues,” and permitting a party to raise those
theories for the first time before the trial court would be both inefficient and “wasteful of
administrative and judicial resources.” The parties stipulated that the only issue to be
resolved by the district court was whether the board correctly ruled on Fogarty’s motion
attacking the priority benefit initially granted to Cragg, Scimed, 486 F. Supp. 2d at 64,
and Scimed did not raise either of these theories before the board, see Final
Interference Decision, 2001 WL 1339890, at *3-10. The district court therefore did not
err by precluding Scimed from presenting evidence to support these new legal theories.
Conclusion
Accordingly, the judgment of the United States District Court for the District of
Columbia is affirmed.
AFFIRMED
2006-1434 7