Orange Book Blog

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.