Several recent cases from the Court of Appeals for the Federal Circuit have confirmed that Congress has given the U.S. Patent Office a great deal of discretion in deciding whether or not to initiate a trial when a petition for patent review under the America Invents Act (AIA) is filed by a challenger. In each instance the Federal Circuit noted it was relying upon the clear wording of the statute that established the new procedures for administratively challenging patents. Under 35 U.S.C. §314(d), “The determination by the Director whether to institute an inter partes review (IPR) under this section shall be final and nonappealable.” (The same “nonappealable” language is found in the sections of AIA governing covered business method (CBM) and post grant review (PGR) challenges).
In St. Jude Med. v. Volcano Corp., Fed. Cir., No. 2014-1183, 4/24/14, the Federal Circuit ruled on an appeal filed St. Jude Medical Cardiology Division Inc. after the Patent Trial and Appeal Board (PTAB) denied St Jude’s petition for inter partes review of a patent on systems for cardiovascular imaging owned by Volcano Corp. (U.S. Patent No. 7,134,994). In ruling on the petition the PTAB never reached the merits of St. Jude’s arguments but instead found the petition to be barred under 35 U.S.C. 315(b) because St Jude had not challenged the patent within one year of having been served with complaint (or counterclaim) alleging infringement of the patent. In this case, litigation between the two parties had been going on for numerous years and the counterclaim of patent infringement of the patent had been raised by Volcano years before the enactment of the AIA. Volcano’s counterclaim was later dismissed without prejudice by stipulation of the parties.
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