BOSTON SCIENTIFIC SCIMED v. MEDTRONIC
`Cite as 497 F.3d 1293 (Fed. Cir. 2007)
`
`1293
`
`Court withdrew its en banc opinion, vacat-
`ed the underlying Board decision, and dis-
`missed the veteran’s appeal as moot. Id.
`at 1367.
`
`on her death, it follows that the Veterans
`Court properly denied her estate’s applica-
`tion to be substituted for her as a party in
`the case. Padgett, 473 F.3d at 1370.
`
`This court reversed. It held that the
`Veterans Court was authorized to make its
`judgment effective nunc pro tunc, and that
`such retroactive relief was ‘‘appropriate in
`this case.’’ Id. at 1368. Recognizing ‘‘the
`general rule that a veteran’s claim for
`benefits ends with his death,’’ id. at 1370,
`it held that the veteran’s widow should be
`substituted for him, since if ‘‘Mrs. Padgett
`could not be substituted, nunc pro tunc
`relief would be inappropriate,’’ id.
`
`In Padgett, making the Veterans Court
`judgment effective nunc pro tunc—pre-
`sumably to the day before the veteran
`died—meant that prior to his death, Pad-
`gett had established his entitlement to dis-
`ability benefits.
` Under the statutory
`scheme, his widow could recover those
`benefits.
`
`
`
`In the present case, however, Mrs. Pelea
`has not contended that the Veterans Court
`judgment in her favor should be made
`effective nunc pro tunc to the date of her
`death. More importantly, to do so would
`not entitle her to any accrued benefits.
`The Veterans Court held only that the
`Board should further consider whether the
`VA had adequately informed her what ad-
`ditional evidence she should submit to sup-
`port her claim. Under that ruling, she
`still was a long way from establishing ei-
`ther that her deceased husband had served
`in the United States military or that his
`death was connected with such service.
`
`CONCLUSION
`
`The judgment of the Veterans Court is
`
`AFFIRMED.
`
`,
`
`BOSTON SCIENTIFIC SCIMED, INC.
`(formerly known as Scimed Life Sys-
`tems, Inc.), Plaintiff–Appellant,
`
`v.
`
`MEDTRONIC VASCULAR, INC. (also
`known as Medtronic AVE, Inc.),
`Defendant–Appellee,
`
`and
`
`Eric C. Martin, Defendant.
`
`No. 2006–1434.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Aug. 8, 2007.
`
`III
`
`Since we hold that Mrs. Pelea’s right to
`pursue her claim for dependency and in-
`demnity compensation benefits terminated
`
`Background: Board of Patent Appeals
`and Interferences, 2001 WL 1339890, is-
`sued final decision denying priority benefit
`to assignee of earlier-filed European pat-
`ent application. Assignee brought action
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-1
`
`

`
`1294
`
`497 FEDERAL REPORTER, 3d SERIES
`
`challenging Board’s final decision in inter-
`ference proceeding. The United States
`District Court for the District of Columbia,
`Richard J. Leon, J., 468 F.Supp.2d 60,
`affirmed. Assignee appealed.
`
`Holdings: The Court of Appeals, Mayer,
`Circuit Judge, held that:
`
`4. Patents O90(1)
`A foreign application may form the
`basis for priority only if that application
`was filed by either the United States appli-
`cant himself or by someone acting on his
`behalf at the time the foreign application
`was filed. 35 U.S.C.A. § 119(a).
`
`(1) statute that governed right of priority
`and benefit of earlier filing date in
`foreign country did not permit appli-
`cant for United States patent to bene-
`fit from priority of foreign application
`previously filed by entity that was not
`acting on behalf of United States appli-
`cant at time of filing, and
`
`(2) assignee could not present evidence to
`district court to support new legal the-
`ories.
`
`Affirmed.
`
`1. Federal Courts O776
`A de novo standard is applied when
`reviewing questions of law, including a tri-
`al court’s interpretation of statutory lan-
`guage.
`
`2. Patents O90(1)
`Statute that governed right of priority
`and benefit of earlier filing date in foreign
`country did not permit applicant for Unit-
`ed States patent to benefit from priority of
`foreign application previously filed by enti-
`ty that was not acting on behalf of United
`States applicant at time of filing.
` 35
`U.S.C.A. § 119(a).
`
`3. Patents O90(1)
`Statute that governs right of priority
`and benefit of earlier an filing date in a
`foreign country requires that a nexus exist
`between the inventor and the foreign ap-
`plicant at the time the foreign application
`was filed. 35 U.S.C.A. § 119(a).
`
`5. Patents O113(6)
`A party may present new evidence to
`the trial court when appealing a decision of
`the Board of Patent Appeals and Interfer-
`ences in an interference proceeding.
`
`6. Patents O113(6)
`A party may not advance new legal
`theories at the trial court level when ap-
`pealing a decision of the Board of Patent
`Appeals and Interferences in an interfer-
`ence proceeding, even if the overarching
`legal issue was presented below.
`
`7. Patents O113(6)
`Assignee could not present evidence
`to district court to support new legal theo-
`ries in action challenging final decision of
`Board of Patent Appeals and Interferences
`denying priority benefit to assignee of ear-
`lier-filed European patent application in
`interference proceeding; parties stipulated
`that only issue to be resolved by district
`court was whether Board correctly ruled
`on
`inventor’s motion attacking priority
`benefit initially granted to other inventor
`and assignee did not raise those new legal
`theories before Board.
`
`Patents O328(2)
`5,575,817. Cited.
`
`Gregory A. Castanias, Jones Day, of
`Washington, DC, argued for the plaintiff-
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-2
`
`

`
`BOSTON SCIENTIFIC SCIMED v. MEDTRONIC
`Cite as 497 F.3d 1293 (Fed. Cir. 2007)
`
`1295
`
`appellant. With him on the brief were
`Gidon D. Stern, Thomas E. Friebel, Ca-
`tharina J. Chin Eng, and Brent P. Ray, of
`New York, NY.
`
`Brian E. Ferguson, McDermott Will &
`Emery LLP, of Washington, DC, argued
`for the defendant-appellee. On the brief
`were Paul Devinsky, John R. Fuisz, Ste-
`phen K. Shahida, and Natalia V. Blinkova.
`Of counsel were Joel M. Freed and Aman-
`da E. Koenig.
`
`Before MAYER, BRYSON and PROST,
`Circuit Judges.
`
`MAYER, Circuit Judge.
`
`Inc.
`Scimed,
`Scientific
`Boston
`(‘‘Scimed’’) * appeals the district court’s
`grant of summary judgment affirming the
`Board of Patent Appeals and Interfer-
`ences’ final decision, which denied Scimed
`the priority benefit of an earlier-filed Eu-
`ropean patent application for the subject
`matter at issue in Patent Interference
`Number 104,192 (‘‘the 8192 interference’’).
`Scimed Life Sys., Inc. v. Medtronic Vascu-
`lar, Inc., 468 F.Supp.2d 60 (D.D.C.2006).
`We affirm.
`
`Background
`
`This appeal stems from an interference
`proceeding before the United States Pat-
`ent 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 in-
`vention. Andrew Cragg and Michael Dake
`(collectively ‘‘Cragg’’) filed patent applica-
`tion 08/461,402 (‘‘the 8402 application’’) for
`the invention in question on June 5, 1995.
`
`Cragg then assigned all rights in the 8402
`application to Boston Scientific Technolo-
`gy, Inc., which later merged into Scimed,
`the plaintiff-appellant and current legal
`owner of the 8402 application. Also on
`June 5, 1995, Thomas J. Fogarty, Timothy
`J. Ryan, and Kirsten Freislinger (collec-
`tively ‘‘Fogarty’’) filed patent application
`08/463,836 (‘‘the 8836 application’’) for the
`same invention. Fogarty assigned their
`rights in the 8836 application to a company
`that eventually became Medtronic, the de-
`fendant-appellee and current legal owner
`of the 8836 application. Eric Martin, a
`third-party to the instant appeal, owns
`U.S. Patent No. 5,575,817 (the ‘‘Martin
`patent’’ or ‘‘ 8817 patent’’), which resulted
`from an application filed on August 19,
`1994.
`
`On April 23, 1998, the board declared an
`interference between Scimed’s 8402 appli-
`cation, Medtronic’s 8836 application, and
`Martin’s 8817 patent. The purpose of the
`interference was to determine which party
`had priority of inventorship, thereby enti-
`tling it to the invention as set forth in the
`sole count of the interference:
`
`An apparatus for reinforcing a bifur-
`cated lumen comprising:
`
`a first section, configured to be posi-
`tioned within the lumen, comprising:
`
`an upper limb, configured to fit within
`the lumen upstream of the bifurcation;
`
`a first lower limb, configured to ex-
`tend 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
`
`* Plaintiff-appellant Boston Scientific Scimed,
`Inc., was formerly known as Scimed Life Sys-
`
`tems, Inc., and will be referred to throughout
`this opinion as ‘‘Scimed.’’
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-3
`
`

`
`1296
`
`497 FEDERAL REPORTER, 3d SERIES
`
`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 posi-
`tioned 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, Patent Interference No.
`104,192, Paper No. 187, 2001 WL 1339890
`at *2–3 (B.P.A.I. Jan. 01, 2001) (‘‘Final
`Interference Decision ’’).
`
`The board initially gave Cragg the bene-
`fit of the filing dates of two European
`patent applications filed by MinTec SARL
`(‘‘MinTec’’), a French company. The earli-
`er 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 Min-
`Tec acting on behalf of Cragg. Fogarty
`was granted the benefit of the filing date
`of U.S. patent application 08/255,681,
`which was June 8, 1994. Martin was ac-
`corded benefit of the application that led to
`the 8817 patent, which was filed on August
`19, 1994. Accordingly, the PTO initially
`designated Cragg as the senior party in
`the interference.
`
`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 appli-
`cations. Final Interference Decision, 2001
`WL 1339890, at *5.
`
`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 8192 interfer-
`ence.
` The district court affirmed the
`final decision, Scimed,
`board’s
`468
`F.Supp.2d at 61, and Scimed filed this
`appeal. We have jurisdiction under 28
`U.S.C. § 1295(a)(1).
`
`Discussion
`
`[1] 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 stan-
`dard when reviewing questions of law, in-
`cluding a trial court’s interpretation of
`statutory language. Pitsker v. Office of
`Pers. Mgmt., 234 F.3d 1378, 1381 (Fed.Cir.
`2000).
`
`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
`
`[2] 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
`
`** 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 applica-
`tion for a patent for the same invention in a
`foreign country which affords similar privi-
`leges 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 applica-
`tion 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 for-
`eign application was filedTTTT
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-4
`
`

`
`BOSTON SCIENTIFIC SCIMED v. MEDTRONIC
`Cite as 497 F.3d 1293 (Fed. Cir. 2007)
`
`1297
`
`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)
`(en banc). According to Vogel, ‘‘§ 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 re-
`quire 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 sup-
`port:
`
`This practice [of allowing a U.S. appli-
`cant 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 rep-
`resentatives and assigns to merely rep-
`resent a codification of the actual prac-
`tice 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 ap-
`plication, regardless of the identity of
`the applicant, must have been filed for
`an invention actually made by the inven-
`tive 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 ap-
`plication [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 interpreta-
`tion, ‘‘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.
`
`[3, 4] 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] as-
`signee 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 applica-
`tion must obviously be for the same inven-
`tion and may be filed by someone other
`than the inventor, section 119(a) also re-
`quires that a nexus exist between the in-
`ventor and the foreign applicant at the
`time the foreign application was filed. In-
`deed, 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
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-5
`
`

`
`1298
`
`497 FEDERAL REPORTER, 3d SERIES
`
`application may only form the basis for
`priority under section 119(a) if that appli-
`cation was filed by either the U.S. appli-
`cant himself, or by someone acting on his
`behalf at the time the foreign application
`was filed.
`
`[5–7] Scimed also contends that the
`district court erred by precluding it from
`presenting evidence relating to theories of
`constructive trust and equitable assign-
`ment. 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 over-
`arching 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 BoardTTTT [T]he 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 ju-
`dicial resources.’’). Failure to advance le-
`gal 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 re-
`sources.’’ 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, 468 F.Supp.2d at 64, and Scimed
`did not raise either of these theories be-
`fore the board, see Final Interference De-
`cision, 2001 WL 1339890, at *3–10. The
`district court therefore did not err by pre-
`cluding 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
`
`,
`
`
`
`Roger H. NEWHOUSE, Claimant–
`Appellant,
`
`v.
`
`R. James NICHOLSON, Secretary of
`Veterans Affairs, Respondent–
`Appellee.
`
`No. 2006–7302.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Aug. 10, 2007.
`
`Background: Veteran sought review of
`Board of Veterans Appeals’ denial of an
`increased disability rating. The United
`States Court of Appeals for Veterans
`Claims, Mary J. Schoelen, J., 21 Vet.App.
`65, 2006 WL 829557, affirmed. Veteran
`appealed.
`
`Holdings: The Court of Appeals, Moore,
`Circuit Judge, held that:
`
`(1) Court of Appeals for Veterans Claims
`was required to examine whether any
`error by Board was prejudicial;
`
`W.L. Gore & Associates, Inc.
`Exhibit 1010-6