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St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.

United States Court of Appeals, Federal Circuit

April 24, 2014

ST. JUDE MEDICAL, CARDIOLOGY DIVISION, INC., Appellant
v.
VOLCANO CORPORATION, Appellee, AND MICHELLE K. LEE, Deputy Director, United States Patent and Trademark Office, Intervenor

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00258.

Before PROST, O'MALLEY, and TARANTO, Circuit Judges.

OPINION

Page 1374

ON MOTION

Taranto, Circuit Judge .

ORDER

St. Jude Medical, Cardiology Division, Inc., petitioned the Director of the United States Patent & Trademark Office to institute an inter partes review of a patent owned by Volcano Corporation. The Director, through her delegee, denied the petition. St. Jude appealed the non-institution decision to this court. Volcano and the Director now move to dismiss. We grant the motion.

Background

In chapter 31 of Title 35, Congress established a process for inter partes review of an issued patent within the PTO. Section 311 specifies that a person other than the owner of the patent may petition the PTO for such review; section 312 describes the required contents of the petition; section 313 allows a response. 35 U.S.C. § § 311-313. Section 314 provides for the Director to institute an inter partes review upon receiving a petition. It specifies that the Director " shall determine whether to institute an inter partes review," id. § 314(b), and states that the Director may not grant the petition unless " there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged," id. § 314(a). Section 315 imposes certain other restrictions on the Director's " instituting" an inter partes review; for example, it bars such institution where " the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." Id. § 315(b). Section 314(d), entitled " No Appeal," adds: " The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." Id. § 314(d).

The " conduct" of an inter partes review follows its " institution," and the Patent Trial and Appeal Board is the one to " conduct each inter partes review instituted under" chapter 31. Id. § 316(c). Unless the review is dismissed, the Board " shall issue a final written decision," determining " the patentability of any patent claim challenged by the petitioner and any new claim added" during the review under section 316. Id. § 318(a). The final written decision is the only decision that the statute authorizes a dissatisfied party to appeal to this court. Section 319 states that " [a] party dissatisfied with the final written decision of the [Board] under section 318(a) may appeal the decision pursuant to sections 141 through 144." Id. § 319. Section 141(c) states that " [a] party to an inter partes review . . . dissatisfied with the final written decision of the [Board] under section 318(a) . . . may appeal the

Page 1375

Board's decision only to the United States Court of Appeals for the Federal Circuit." Id. § 141(c).

In 2010, St. Jude brought suit against Volcano in the United States District Court for the District of Delaware, alleging infringement of five St. Jude patents. St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., No. 10-cv-631 (D. Del. filed July 27, 2010). On September 20, 2010, Volcano filed a counterclaim against St. Jude asserting infringement of U.S. Patent No. 7,134,994--the patent at issue here. More than two years later, on October 22, 2012, the district court, based on the stipulations of the parties, dismissed all claims relating to the '994 patent. See St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., No. 10-cv-631 (D. Del. Oct. 22, 2012), ECF No. 437.

Six months after the dismissal, on April 30, 2013, St. Jude filed a petition for inter partes review of the '994 patent. The Director, through the Board as her delegee, denied the petition.[1] The Board explained that a counter-claim alleging infringement constitutes a " complaint alleging infringement of the patent" within the meaning of section 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against ...


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