ZOLL Lifecor Corp. v. Philips Electronics North America Corp.

Effectively reiterating a decision from earlier this year, the U.S. Court of Appeals for the Federal Circuit granted a patent owner’s motion to dismiss an appeal of the decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB, the Board) not to institute eight separate inter partes review (IPR) proceedings, explaining, once again, that the Court has no authority to review non-institution decisions for IPR proceedings. ZOLL Lifecor Corp. v. Philips Electronics North America Corp., Case Nos. 14-1588; -1589; -1590; -1591; -1592; -1593; -1594; -1595 (Fed. Cir., Aug. 25, 2014) (O’Malley, J.).

ZOLL Lifecor filed IPR petitions seeking to invalidate eight patents asserted by Philips Electronics, in two district court actions against ZOLL Lifecor and its parent, ZOLL Medical.

In separate decisions denying institution, the Board noted that ZOLL Medical was, as the parent of ZOLL Lifecor, a real party-in-interest and should have been identified as such in each of the IPR petitions. The Board noted that normally the petitioner would be given one month’s time within which to cure the statutorily defective petitions but, because the petitioner had been served with a complaint asserting all eight patents more than one year prior to the filing of the petitions, those petitions were time-barred under 35 U.S.C. § 315(b).  ZOLL Lifecor then appealed the non-institution decisions of the Board.

The Court pointed to its earlier decision inSt. Jude Medical (IP UpdateVol. 16, No. 10), where it explained that IPR is a two-step process and that the controlling statute, § 319, authorizes appeal to the Federal Circuit only from the “final written decision of the Board.”  The Court specifically noted that it has stated “[t]he statute provides for an appeal to this court only of the Board’s decision . . . not the Director’s (institution) decision . . .” Moreover, the Court explained that § 314(d) “contains a broadly worded bar on appeal” of a non-institution decision stating that “[T]he determination by the Director whether to institute inter partes review under this section shall be final and nonappealable.” Additionally, the Court was not persuaded by the ZOLL Lifecor’s attempt to distinguish the facts in St. Jude Medical on the ground that its petitions were rejected under § 315(b), with the Court noting that ultimately the one-year bar under § 315(b) was determinative for both decisions.