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USPTO Explains AIA Review Deadline – St. Jude Medical v. Volcano Corp. (PTAB 2013)

October 29th, 2013

On October 16, 2013, the Patent Trial and Appeal Board (PTAB) issued a decision in an inter partes review (IPR) proceeding clarifying the application of the one year statutory bar of 35 U.S.C. § 315(b). The decision, written by ALJ Kamholz, issued in St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp. IPR2013-00258, Paper 29. The petitioner, St. Jude Medical, filed a petition to institute an IPR against U.S. Patent 7,134,994 (“’994 patent”) owned by Volcano Corp. The PTAB denied the petition, holding that an IPR was barred by § 315(b).  

Section 315(b) states:

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 infringement of the patent.

Over one year before the petition for IPR, St. Jude asserted claims of infringement against Volcano. Volcano filed a counterclaim asserting the ’994 patent and St. Jude answered. This led to the issue of “whether a counterclaim alleging infringement of a patent is ‘a complaint alleging infringement of the patent’ within the meaning of 35 U.S.C. § 315(b).” But in answering this question the PTAB also implicitly held that direct evidence is not necessary to prove service under § 315(b).

Whether a Counterclaim is a Complaint

The PTAB looked to the legislative history of § 315(b) and determined that Congress intended for the one year bar of § 315(b) to apply to parties served with a counterclaim. The PTAB relied on statements in the legislative history that the purpose of § 315(b) is to prevent IPR from being used as a “tool for harassment” in “repeated litigation and administrative attacks.” The PTAB found that construing § 315(b) narrowly to exclude counterclaims 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.” The PTAB thus determined that Congress intended § 315(b) to be applied broadly and include counterclaims as “complaints.” Importantly, the PTAB did not limit § 315(b) to only complaints and counterclaims, leaving open the possibility that the § 315(b) bar may also apply to parties served with other pleadings.

Evidence Needed to Prove Service Under § 315(b)

In holding that the petition was barred by § 315(b) the PTAB also implicitly found that Volcano’s evidence of service was sufficient. The evidence of service was not directly discussed in the PTAB’s opinion. But the sufficiency of the evidence must have been considered in barring the petition because service is a necessary element of § 315(b).

The only evidence of service Volcano presented was their counterclaim and St. Jude’s response. Volcano did not provide a certificate of service or any other direct evidence of service. Yet the PTAB found the evidence on the record was sufficient to infer that service occurred. This finding indicates that the PTAB does not require direct evidence of service to bar a petition under § 315(b).

For more information, please contact Sterne Kessler Director Jon E. Wright at jwright@skgf.com.