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.