St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258 (PTAB)
by Robert F. Kappers and Herbert D. Hart III
On October 16, 2013, the Patent Trial and Appeal Board issued a decision denying the petition for inter partes review filed by St. Jude Medical targeting Volcano Corp.'s U.S. Patent No. 7,134,994 ("the '994 patent"). The '994 patent relates to a multifunctional invasive cardiovascular diagnostic measurement device.
The Board denied St. Jude's petition because it was filed more than one year after Volcano served a counterclaim asserting a claim of infringement in a prior district court suit between the parties (St. Jude Medical, Cardiology Division, Inc., et al. v. Volcano Corp., 1:10-cv-00631 (D. Del.)).
Specifically, the Board found that Volcano's counterclaim alleging infringement of the '994 patent is a "complaint alleging infringement of the patent" within the meaning of the one-year statutory time bar of 35 U.S.C. § 315(b). In adopting a broad interpretation of § 315(b), the Board relied on legislative history indicating Congress' intent to provide a quick and cost effective alternative to litigation:
Nothing in the legislative history indicates that Congress intended to apply the § 315(b) time limit to some, rather than all, accused infringers. Construing "complaint" in § 315(b) restrictively, to exclude counterclaims that present allegations of infringement, would have just that effect. It would leave a patent open to serial attack, even after years of patent infringement litigation, in the event that the accused infringer is accused of infringement only via a counterclaim.
This decision comes as further development of the Board’s previous interpretation of § 315(b) in Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, where the Board found that the filing of a second complaint in the second of two prior lawsuits did not reset the time for filing a petition.
St. Jude's petition can be found here, and Volcano's patent owner response can be found here.
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