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Patent Counsel

USPTO’s Decision to Not Institute Inter Partes Review of a Patent is Final and Nonappealable

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USPTO’s Decision to Not Institute Inter Partes Review of a Patent is Final and Nonappealable

Addressing 35 U.S.C. § 314(d), the US Court of Appeals for the Federal Circuit (the Federal Circuit) determined that, in recent precedential orders in inter partes review proceedings, the Federal Circuit does not have authority to hear appeals of the United States Patent & Trademark Office (USPTO) decisions to not institute inter partes review of an issued patent. St. Jude Medical v. Volcano Corporation (Fed. Cir. Order, April 22, 2014) (Prost, O’Malley, Taranto, J.).

In 2010, St. Jude Medical, Cardiology Division, Inc. (St. Jude) sued Volcano Corporation (Volcano) in the United States District Court for the District of Delaware, alleging infringement of five St. Jude patents. Subsequently, Volcano filed a counterclaim against St. Jude asserting infringement of one of its patents, U.S. Patent No. 7,134,994 (the ‘994 patent). In October 2012, based on parties’ stipulations, the district court dismissed all claims relating to the ‘994 patent.

In April 2013, St. Jude filed a petition with the USPTO for inter partes review of the ‘994 patent. The USPTO denied the petition on the ground that the counterclaim against St. Jude in the 2010 action barred the USPTO from instituting an inter partes review of the ‘994 patent. That is, the USPTO stated that “a counterclaim alleging infringement constitutes a ‘complaint alleging infringement of the patent’ within the meaning of section 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a counterclaim alleging infringement of the patent more than one year before filing the petition.” As a result, St. Jude appealed to the Federal Circuit the USPTO’s non-institution decision of an inter partes review of the ‘994 patent, seeking reversal of the decision. Volcano and the USPTO moved to dismiss the appeal.

On appeal, based on the structure of the inter partes review provisions and jurisdictional statute in view of those provisions (e.g., including Section 314(d)), the Federal Circuit determined that the USPTO’s decision to not institute inter partes review is not a “final written decision” of the USPTO under Section 318(a), and thus the Federal Circuit does not have jurisdiction to hear. That is, the Federal Circuit may not hear St. Jude’s appeal from the USPTO’s denial of the petition for inter partes review of the ‘994 patent. 35 U.S.C. § 314(d) states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

Practice Tips: Under 35 U.S.C. § 314(d), the USPTO’s decision to not institute an inter partes review of a patent is final and non-appealable to the Federal Circuit. Also, any counterclaim asserting infringement of a patent in previous court action may be a barring ground for instituting an inter partes review of the patent later at the USPTO.

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