Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 29
`Entered: October 16, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ST. JUDE MEDICAL, CARDIOLOGY DIVISION, INC.
`Petitioner
`
`v.
`
`VOLCANO CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00258
`Patent 7,134,994
`_______________
`
`
`Before JAMESON LEE, LORA M. GREEN, JONI Y. CHANG,
`JOSIAH C. COCKS, and SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 29
`Entered: October 16, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ST. JUDE MEDICAL, CARDIOLOGY DIVISION, INC.
`Petitioner
`
`v.
`
`VOLCANO CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00258
`Patent 7,134,994
`_______________
`
`
`Before JAMESON LEE, LORA M. GREEN, JONI Y. CHANG,
`JOSIAH C. COCKS, and SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2013-00258
`Patent 7,134,994
`
`
`I.
`
`INTRODUCTION
`
`St. Jude Medical, Cardiology Division, Inc. (“St. Jude”) filed a petition
`
`(Paper 1) on April 30, 2013, to institute an inter partes review of claims 1-20 of
`
`U.S. Patent 7,134,994 (“ ’994 patent”). St. Jude later filed a corrected petition
`
`(Paper 9, “Pet.”). Patent Owner Volcano Corporation (“Volcano”) filed mandatory
`
`notices (Paper 18) and a preliminary response (Paper 27, “Prelim. Resp.”). The
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`Board, acting on behalf of the Director, has jurisdiction under 35 U.S.C. § 314.
`
`The ’994 patent was involved in patent litigation captioned St. Jude Medical,
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`Cardiology Division, Inc., et al. v. Volcano Corp., 1:10-cv-00631 (D. Del.).
`
`Paper 18, 2. In that litigation, St. Jude asserted claims of infringement of its
`
`patents against Volcano. Ex. 1006 ¶¶ 19-38. Volcano filed and served an answer
`
`and counterclaim on September 20, 2010, in which it asserted a claim of
`
`infringement of the ’994 patent against St. Jude. Ex. 1007 ¶¶ 76-80. St. Jude
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`answered and counter-counterclaimed. Ex. 1008, 29-34, 41-46. The parties
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`stipulated to a dismissal with prejudice of all claims relating to the ’994 patent on
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`October 21, 2012. Ex. 1009, 1.
`
`We deny the petition because it was not filed within the one-year period set
`
`forth in 35 U.S.C. § 315(b).
`
`II. ANALYSIS
`
`Section 315(b) of Title 35 of the United States Code provides:
`
`(b) PATENT OWNER’S ACTION.—An inter partes
`review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringe-
`ment of the patent. The time limitation set forth in the
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`2
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`Case IPR2013-00258
`Patent 7,134,994
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`preceding sentence shall not apply to a request for joinder
`under subsection (c).
`
`We must decide whether a counterclaim alleging infringement of a patent is
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`“a complaint alleging infringement of the patent” within the meaning of
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`35 U.S.C. § 315(b). We determine that it is.
`
`The legislative history of 35 U.S.C. § 315(b) indicates that Congress
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`intended inter partes reviews to “provid[e] quick and cost effective alternatives to
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`litigation.” H.R.Rep. No. 112-98 at 48 (2011). The legislative history indicates
`
`also that 35 U.S.C. § 315(b) was intended to set a “deadline for allowing an
`
`accused infringer to seek inter partes review after he has been sued for
`
`infringement.” 157 CONG. REC. S5429 (daily ed. Sep. 8, 2011) (statement of
`
`Sen. Kyl). The deadline helps to ensure that inter partes review is not used as a
`
`“tool[] for harassment” by “repeated litigation and administrative attacks.”
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`H.R. Rep. No. 112-98 at 48 (2011). Allowing such attacks “would frustrate the
`
`purpose of the section as providing quick and cost effective alternatives to
`
`litigation.” Id.
`
`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. That
`
`interpretation would frustrate Congressional intent, and would lead to unjustified
`
`discrimination among otherwise similarly-situated accused infringers. See Graham
`
`Cnty. Soil & Water Conservation Dist. v. U.S. ex rel. Wilson, 559 U.S. 280, 298
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`3
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`Case IPR2013-00258
`Patent 7,134,994
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`(2010) (acknowledging the “conventional judicial duty to give faithful meaning to
`
`the language Congress adopted in the light of the evident legislative purpose”)
`
`(internal quotation omitted).
`
`St. Jude makes several arguments as to why § 315(b) does not bar its
`
`petition, but none of them is persuasive.
`
`First, St. Jude argues that the Board should look to the Federal Rules of Civil
`
`Procedure for guidance as to the plain meaning of the statute. Pet. 3 (citing Ariosa
`
`Diagnostics v. Isis Innovation, Ltd., IPR2012-00022, Paper 20, 4). According to
`
`St. Jude, Rule 3 of the Federal Rules defines “complaint” as the filing that
`
`commences a civil action, and Rule 7 distinguishes a “complaint” from a
`
`“counterclaim” or an “answer.” Id. at 2-3.
`
`The Federal Rules of Civil Procedure neither define the term “complaint” in
`
`Rule 3 nor use it to refer only to the filing that commences a civil action. Rule 3
`
`states, as amended in 2007: “A civil action is commenced by filing a complaint
`
`with the court.” The rule specifies merely which filing commences a civil action—
`
`a complaint—but does not limit a “complaint” to be that filing and nothing else.
`
`Moreover, the term is used elsewhere in the Rules to refer to a pleading that does
`
`not commence a civil action. For example, Rule 14(a)(1) states, in pertinent part:
`
`“A defending party may, as third-party plaintiff, serve a summons and complaint
`
`on a nonparty who is or may be liable to it for all or part of the claim against it.” A
`
`complaint against a third party does not commence a civil action; rather, it joins the
`
`third party to an existing civil action. The Rules, therefore, do not define or use the
`
`term “complaint” in the exclusive manner St. Jude argues.
`
`We disagree also with St. Jude’s contention that Rule 7 distinguishes a
`
`counterclaim from a complaint in a way that is meaningful for our determination.
`
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`4
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`Case IPR2013-00258
`Patent 7,134,994
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`Rule 7 lists pleadings allowed in a civil action. The mere listing of items
`
`separately, however, does not, by itself, draw distinctions among the items in the
`
`list insofar as their legal equivalence. We discern in Rule 7 no such comparison or
`
`distinction between a complaint and a counterclaim.
`
`A complaint and a counterclaim instead bear marked similarities. A
`
`counterclaim imposes the same burdens on the parties as does a complaint. A
`
`counterclaim alleges a cause of action, just like a complaint; confirming that
`
`equivalence, Wright and Miller explains that a counterclaim “basically is a
`
`defendant’s complaint.” 5 FED. PRAC. & PROC. CIV. § 1184 (3d ed.). The same
`
`rules of pleading apply to a counterclaim of infringement as to a complaint.
`
`FED. R. CIV. P. 8(a); Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (remanding for entry of infringement counterclaim that
`
`“violated no rule of pleading”). By filing a counterclaim, the defendant, in effect,
`
`sues the plaintiff within the same civil action. When the counterclaim alleges
`
`patent infringement, the original plaintiff becomes an accused infringer who has
`
`been sued for patent infringement. The accused infringer must answer the
`
`counterclaim or face default. See Info. Sys. & Networks Corp. v. United States,
`
`994 F.2d 792, 797 (Fed. Cir. 1993) (“[D]efault judgment is an important sanction
`
`which deters parties from ignoring the requirement to file an answer to a
`
`counterclaim.”). The similarities between a complaint and a counterclaim
`
`underscore their equivalence for purposes of § 315(b).
`
`St. Jude argues next that a counterclaim should be distinguished from a
`
`complaint in § 315(b) because that distinction is made in § 315(a). Pet. 3. St. Jude
`
`observes that 35 U.S.C. § 315(a)(3) excludes a counterclaim challenging validity
`
`from constituting a complaint challenging validity in § 315(a)(1). This argument is
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`5
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`Case IPR2013-00258
`Patent 7,134,994
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`unpersuasive. Section 315(a)(3) states specifically that the exclusion applies to,
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`and is made for purposes of, subsection § 315(a) only. The inapplicability of such
`
`an exclusion to § 315(b) indicates, to the contrary of St. Jude’s position, that no
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`similar exclusion exists, or was intended, with regard to a complaint and a
`
`counterclaim for infringement in respect of § 315(b).
`
`St. Jude argues further that “complaint” in § 315(b) should be construed
`
`narrowly because Congress used broad language, such as “charged with
`
`infringement,” when it intended to include allegations of infringement beyond
`
`those made in a complaint by which a civil action is commenced. See Leahy-Smith
`
`America Invents Act, Sec. 18(a)(1)(B); Pet. 3. This argument is unpersuasive.
`
`The referenced phrase in AIA Section 18 addresses pre-litigation allegations of
`
`infringement, not allegations filed at the beginning of, or during, litigation.
`
`When Congress selected the broad phrase “charged with infringement,” in
`
`legislating the transitional program for covered business method patents, it did so
`
`to confer petitioning eligibility on parties who had not yet been sued. See 157
`
`CONG. REC. S7413 (daily ed. Nov. 14, 2011) (statement of Sen. Kyl) (explaining
`
`that the transitional program extends to parties charged with infringement to
`
`prevent them from being “dragged into frivolous litigation”). Moreover, the
`
`definition of “charged with infringement” in 37 C.F.R. § 42.302(a)—that “a real
`
`and substantial controversy regarding infringement of a covered business method
`
`patent exists such that the petitioner would have standing to bring a declaratory
`
`judgment action in Federal court”—addresses the situation in which litigation has
`
`not yet commenced. The use of the phrase “charged with infringement” in the
`
`context of AIA Section 18, therefore, has no bearing on whether § 315(b) should
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`6
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`Case IPR2013-00258
`Patent 7,134,994
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`be read to exclude a claim of infringement, made in litigation, from triggering the
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`one-year time bar.
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`St. Jude argues, finally, that Volcano’s dismissal with prejudice of the ’994
`
`patent infringement claims “purged” the cause of action, and thereby made
`
`§ 315(b) inapplicable. Pet. 3 (citing Macauto USA v. Bos GmbH, IPR2012-00004,
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`Paper 18, 14-15) (PTAB 2013). We disagree. Service of a complaint alleging
`
`infringement triggers applicability of § 315(b), even if that complaint is later
`
`dismissed with prejudice. Universal Remote Control, Inc. v. Universal
`
`Electronics, Inc., IPR2013-00168, Paper 9, 6-7) (PTAB 2013).
`
`For the foregoing reasons, we determine that the phrase “complaint alleging
`
`infringement of the patent,” as used in 35 U.S.C. § 315(b), is sufficiently broad to
`
`include a counterclaim that alleges infringement of the patent. St. Jude was served
`
`with Volcano’s counterclaim for infringement of the ’994 patent on September 20,
`
`2010. St. Jude did not file its petition within one year of that date. The petition is,
`
`therefore, barred.
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`III. CONCLUSION
`
`The Board denies the petition because it was not filed within the time limit
`
`imposed by 35 U.S.C. § 315(b).
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the petition challenging the patentability of claims 1-20 of
`
`U.S. Patent 7,134,994 is denied.
`
`
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`
`
`7
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`Case IPR2013-00258
`Patent 7,134,994
`
`
`For PETITIONER:
`
`Matthew A. Smith
`Turner Boyd LLP
`
`Glenn Law
`Foley & Lardner LLP
`
`
`
`For PATENT OWNER:
`
`Stephen R. Schaefer
`Dorothy P. Whelan
`Fish & Richardson P.C.
`
`
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`8
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