Paper No. 7
`Filed: December 23, 2013
`
`
`Filed on behalf of: Philips Electronics North America Corporation
`By:
`J. Michael Jakes
`
`Denise W. DeFranco
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: mike.jakes@finnegan.com
`
` denise.defranco@finnegan.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`ZOLL LIFECOR CORPORATION
`Petitioner
`
`v.
`
`KONINKLIJKE PHILIPS ELECTRONICS N.V.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00606
`Patent 5,593,427
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 5,593,427
`
`
`
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`

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`Case No. IPR2013-00606
`Patent Owner’s Preliminary Response
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`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Filing Date for the Pending Petition Should Be Vacated Because
`Petitioner Did Not Identify All Real Parties in Interest or Related
`Matters as Required by 35 U.S.C. § 312 and 37 C.F.R. § 42.8 ....................... 4
`
`A.
`
`The Filing Date Should be Vacated Because Zoll Lifecor Failed
`to Identify all Related Matters ............................................................... 5
`
`1.
`
`2.
`
`3.
`
`Philips Asserted the ’427 Patent Against Petitioner Zoll
`Lifecor and Asserted Related Patents Against Zoll
`Lifecor’s Parent, Zoll Medical .................................................... 6
`
`The Petition Shows that the Massachusetts Action Is a
`Related Matter ............................................................................. 7
`
`Petitioner Has Admitted That the Pennsylvania Action,
`Which Includes Claims Asserting the ’427 Patent,
`Relates Substantially to the Unreported Massachusetts
`Action ........................................................................................ 10
`
`B.
`
`The Filing Date Should Also be Vacated Based on Zoll
`Lifecor’s Failure to Identify all the Real Parties in Interest ................ 15
`
`1.
`
`2.
`
`3.
`
`4.
`
`Public Documents Show that Parent Zoll Medical
`Controls Its Wholly Owned Subsidiary, Zoll Lifecor .............. 16
`
`Zoll Medical Controls Zoll Lifecor’s Involvement in the
`Pennsylvania Action and in This Proceeding ........................... 20
`
`Zoll Medical Could Have Controlled Zoll Lifecor’s
`Involvement in the Pennsylvania Action and in This
`Proceeding ................................................................................. 23
`
`Prior Decisions of the PTO Support Vacating the Filing
`Date in This Proceeding ............................................................ 25
`
`III. Claim Construction ........................................................................................ 27
`
`A. Overview of the ’427 Patent ................................................................ 27
`
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`Case IPR2013-00606
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`Claim Construction Standard and Prior Claim Construction
`Decisions ............................................................................................. 29
`
`B.
`
`C.
`
`Claim Terms ........................................................................................ 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`“monitoring” ............................................................................. 30
`
`“a function of” ........................................................................... 33
`
`“energy source” ......................................................................... 33
`
`“truncated biphasic (multiphasic) exponential waveform” ...... 34
`
`“patient-dependent electrical parameter” .................................. 35
`
`“discharge parameter” ............................................................... 37
`
`IV. The Petition Fails to Establish a Reasonable Likelihood of Prevailing
`as to Any Challenged Claim .......................................................................... 38
`
`A.
`
`B.
`
`The Combinations of Bell in View of Either Pless, Kroll, or
`Schuder (Grounds 1–3) Are Not Supported ........................................ 39
`
`The Alleged Obviousness-Type Double Patenting Grounds 4
`and 5 Are Not Applicable .................................................................... 43
`
`1.
`
`2.
`
`The ’879 Patent Cannot Be Used as a Reference Against
`the ’427 Patent Under the Safe Harbor of 35 U.S.C. §
`121 ............................................................................................. 43
`
`Claim 9 of the ’427 Patent Is Directed to a Patentably
`Distinct Species Than Claim 9 of the ’454 Patent .................... 45
`
`C. Ground 3 as to Claims 2 and 3 Violates 37 C.F.R.
`§ 42.104(b)(4) ...................................................................................... 46
`
`V.
`
`Conclusion ..................................................................................................... 47
`
`
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`Case IPR2013-00606
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`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`Amgen Inc. v. Hoffman-La Roche Ltd.,
`580 F.3d 1340 (Fed. Cir. 2009) .......................................................................... 44
`
`Page(s)
`
`Copperweld Corp. v. Independence Tube Corp.,
`467 U.S. 752 (1984) ............................................................................................ 24
`
`Dalton v. Honda Motor Co.,
`425 F. App’x 886 (Fed. Cir. 2011) ............................................................... 24, 25
`
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) .......................................................................... 9, 29
`
`KSR International Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... 39, 42
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................ 9, 29, 32
`
`St. Jude Medical, Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) .......................................................................... 45
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ............................................................................................ 15
`
`Universal Oil Products Co. v. Rexall Drug & Chemical Co.,
`463 F.2d 1122 (C.C.P.A. 1972) .......................................................................... 24
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 31
`
`PATENT AND TRADEMARK OFFICE DECISIONS
`In re Guan,
`Reexamination Proceeding, Control No. 95/001,045,
`Decision Vacating Filing Date (Aug. 25, 2008) ................................................. 26
`
`Heart Failure Technologies, LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB July 31, 2013) .............................................. 42
`iii
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`FEDERAL STATUTES
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`Case IPR2013-00606
`Patent Owner’s Preliminary Response
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`35 U.S.C. § 103 ........................................................................................................ 39
`
`35 U.S.C. § 121 ........................................................................................... 43, 44, 45
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`35 U.S.C. § 312 ...................................................................................................... 3, 4
`
`35 U.S.C. § 314 ........................................................................................................ 38
`
`35 U.S.C. § 315 ........................................................................................................ 26
`
`REGULATIONS
`
`37 C.F.R. § 1.146 ..................................................................................................... 45
`
`37 C.F.R. § 42.8 ................................................................................................passim
`
`37 C.F.R. § 42.104 ............................................................................................passim
`
`37 C.F.R. § 42.106 ......................................................................................... 4, 15, 27
`
`Office Patent Trial Practice Guide,77 Fed. Reg. 48,756 (Aug. 14, 2012) (to
`be codified at 37 C.F.R. pt. 42) ....................................................................passim
`
`OTHER AUTHORITIES
`
`18A Charles Alan Wright, Arthur R. Miller & Edward A. Cooper, Federal
`Practice and Procedure § 4451 (2d ed. 2011) ..................................................... 16
`Manual of Patent Examining Procedure § 2258 (8th ed., Rev. 7) (July 2008) ..... 9, 29
`
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`Case No. IPR2013-00606
`Patent Owner’s Preliminary Response
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`
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`I.
`
`Introduction
`Patent owner Philips Electronics North America Corporation (“Philips”)1
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and 37
`
`C.F.R. § 42.07, responding to the Petition for Inter Partes Review of United States
`
`Patent No. 5,593,427 Pursuant to 35 U.S.C. §§ 311-319, 37 C.F.R. § 42 (the
`
`“petition”) filed by Zoll Lifecor Corporation (“Zoll Lifecor” or “petitioner”).
`
`This is one of eight petitions for inter partes review that Zoll Lifecor has
`
`filed against related patents, all owned by Philips. These patents relate to the core
`
`functionality of defibrillators, including the electrical signal or waveform that
`
`shocks a patient. Philips asserted these eight patents against Zoll Lifecor in a
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`litigation filed a year before the pending petition was filed. In addition, Philips
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`asserted six of the eight patents against Zoll Lifecor’s corporate parent, Zoll
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`Medical Corporation (“Zoll Medical”), in a case that is still pending. Zoll Lifecor
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`is a wholly owned subsidiary of Zoll Medical, and Zoll Medical has stated that it
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`operates the Lifecor business through its Zoll Lifecor subsidiary. The patent at
`
`
`1 Although the caption for this proceeding indicates that Koninklijke Philips
`
`Electronics N.V. is the owner of U.S. Patent No. 5,593,427, the patent was
`
`assigned to Philips Electronics North America Corporation on August 18, 2010.
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`issue in this proceeding—U.S. Patent No. 5,593,427—is related to the six patents
`
`that were asserted against Zoll Medical.
`
`Despite that related patents are at issue in the case against Zoll Medical,
`
`petitioner Zoll Lifecor did not identify the litigation against Zoll Medical as a
`
`related matter under 37 C.F.R. § 42.8(b)(2). The petitioner’s failure to identify the
`
`pending litigation against Zoll Medical is made worse by the fact that the claim
`
`term “monitoring,” which the petitioner seeks to construe in its pending petition,
`
`was construed in the case against Zoll Medical in a written order that the petitioner
`
`also fails to mention. Because 37 C.F.R. § 42.8 requires that a petitioner identify
`
`in the petition any judicial matter “that would affect or be affected by, a decision in
`
`the proceeding” and petitioner did not do that when it omitted the case against Zoll
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`Medical, the petition is deficient and the filing date of the petition should be
`
`revoked.
`
`The pending petition is also deficient because petitioner Zoll Lifecor
`
`violated a specific statutory provision when it failed to identify Zoll Medical as
`
`another real party in interest. Prior public statements by both Zoll Medical and
`
`Zoll Lifecor show that Zoll Medical is a real party in interest in this proceeding.
`
`As its corporate parent, Zoll Medical can exercise control over Zoll Lifecor.
`
`Moreover, Zoll Medical has in fact exercised control over Zoll Lifecor’s business
`
`generally and Zoll Lifecor’s participation in its litigation with Philips. Because the
`
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`requirement to identify “all” real parties in interest in a petition is a statutory one,
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`35 U.S.C. § 312, the pending petition is deficient and the filing date of the petition
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`should be revoked.
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`Apart from failing to satisfy the requirements for a petition for inter partes
`
`review, petitioner Zoll Lifecor has not established a reasonable likelihood of
`
`prevailing as to any challenged claim. For instance, in all of its proposed
`
`rejections based on prior art, the petitioner seeks to combine the Bell reference
`
`with one of three other references. Yet the petitioner does not explain how the
`
`references could have been combined to arrive at the claimed invention or why a
`
`person of ordinary skill in the art would have made the combination. The
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`petitioner seeks to pick and choose features from these references merely because
`
`they all involve defibrillation. Yet that is not a sufficient basis to combine
`
`references. The petitioner’s proposed obviousness-type double patenting rejections
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`are also flawed. Indeed, the Office determined in a parent application that the
`
`embodiments claimed in the identified patents are patentably distinct.
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`Based on any one of these defects, Philips requests that the Board not
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`institute the requested inter partes review.
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`II. The Filing Date for the Pending Petition Should Be Vacated Because
`Petitioner Did Not Identify All Real Parties in Interest or Related
`Matters as Required by 35 U.S.C. § 312 and 37 C.F.R. § 42.8
`The patent statute identifies the requirements for a petition for inter partes
`
`review and states that a petition “may be considered only if” it meets those
`
`requirements. 35 U.S.C. § 312(a) (emphasis added). One of those requirements is
`
`identifying “all real parties in interest.” 35 U.S.C. § 312(a)(2). By statute, the
`
`requirements also include “such other information as the Director may require by
`
`regulation.” 35 U.S.C. § 312(a)(4). By regulation, a petitioner must include “as
`
`part of the petition” an identification of “related matters,” meaning “any other
`
`judicial or administrative matter that would affect, or be affected by, a decision in
`
`the proceeding,” as well as an identification of “each real party-in-interest for the
`
`party.” 37 C.F.R. § 42.8(a)(1), (b)(1), (b)(2); see also 37 C.F.R. § 42.104
`
`(indicating that a petition for inter partes review must include “the requirements
`
`of” § 42.8). When a petition does not satisfy these requirements, it should not be
`
`accorded a filing date. 37 C.F.R. § 42.106 (stating that a petition “will not be
`
`accorded a filing date until the petition satisfies” certain requirements, including
`
`complying with § 42.104).
`
`Here, the petitioner failed to identify in the pending petition all of the real
`
`parties in interest and all of the judicial matters that would affect or be affected by
`
`a decision in this proceeding. Because both of these are requirements for a petition
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`for inter partes review and are thus requirements for receiving a filing date for a
`
`petition, the filing date for the pending petition should be vacated.
`
`A. The Filing Date Should be Vacated Because Zoll Lifecor Failed to
`Identify all Related Matters
`
`Zoll Lifecor’s failure to identify all “related matters” is a fatal deficiency in
`
`the pending petition. The pertinent regulation requires a petitioner, “as part of the
`
`petition,” to identify “any other judicial or administrative matter that would affect,
`
`or be affected by, a decision in the proceeding.” See 37 C.F.R. § 42.8(a)(1), (b)(2);
`
`37 C.F.R. § 42.104 (stating what the petition must set forth “[i]n addition to the
`
`requirements of” § 42.8); see also 35 U.S.C. § 312(a)(4) (stating that a petition
`
`“may be considered only if . . . the petition provides such other information as the
`
`Director may require by regulation”) (emphasis added).
`
`Here, Zoll Lifecor did not notify the Board regarding a related action filed
`
`by Philips against Zoll Lifecor’s corporate parent in Massachusetts district court
`
`even though Zoll Lifecor admitted that that action (1) involved similar technology,
`
`(2) had numerous overlapping patents and substantive issues, and (3) had common
`
`discovery issues and common settlement negotiations as an action in Pennsylvania
`
`district court in which Philips asserted the ’427 patent and others against Zoll
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`Lifecor. This failure occurred despite the fact that Zoll Lifecor identifies the action
`
`in Pennsylvania as related to this proceeding. See Petition at 2.
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`1.
`
`Philips Asserted the ’427 Patent Against Petitioner Zoll
`Lifecor and Asserted Related Patents Against Zoll Lifecor’s
`Parent, Zoll Medical
`The pending petition seeks inter partes review of one of eight patents
`
`asserted by Philips in an action alleging infringement by Zoll Lifecor. In that
`
`action, filed in the United States District Court for the Western District of
`
`Pennsylvania, Philips alleges infringement of the ’427 patent and seven related
`
`patents based on a wearable defibrillator product, known as LifeVest (the
`
`“Pennsylvania Action”). Ex. 2001 (Complaint, Koninklijke Philips Elecs. N.V. v.
`
`Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa. Sept. 21, 2012), ECF No.
`
`1) (“Pennsylvania Action Complaint”). With the petition in this proceeding and
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`seven related petitions, Zoll Lifecor seeks inter partes review of all eight patents
`
`asserted in the Pennsylvania Action.
`
`In an action filed two years before the Pennsylvania Action, Philips asserted
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`six patents against Zoll Medical, Zoll Lifecor’s corporate parent, in the United
`
`States District Court for the District of Massachusetts (the “Massachusetts
`
`Action”). Ex. 2002 (Complaint, Koninklijke Philips Elecs. N.V. v. Zoll Med.
`
`Corp., Civ. A. No. 1:10-cv-11041 (D. Mass. June 18, 2010), ECF No. 1). The six
`
`patents Philips asserted in the Massachusetts Action are six of the eight patents for
`
`which Zoll Lifecor currently seeks review (not including the ’427 patent):
`
`
`
`6
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`

`
`U.S. Patent
`No.
`
`5,607,454
`5,735,879
`5,749,905
`5,803,927
`5,836,978
`6,047,212
`5,593,427
`5,749,904
`
`Asserted
`Against Zoll
`Medical in
`Massachusetts
`Action
`
`
`
`
`
`
`
`
`
`Asserted
`against Zoll
`Lifecor in
`Pennsylvania
`Action
`
`
`
`
`
`
`
`
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`Case IPR2013-00606
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`Inter Partes
`Review
`Requested by
`Zoll Lifecor
`
`
`
`
`
`
`
`
`
`All eight of these patents are related, each claiming priority to application serial no.
`
`08/103,837. See, e.g., Ex. 1001 at 1. And, in all eight petitions, including the one
`
`seeking review of the ’427 patent, Zoll Lifecor identified the Pennsylvania Action
`
`as a related matter, but did not mention the Massachusetts Action, despite having
`
`admitted the significant overlap in issues involved and despite that the patents in
`
`both actions are related. See, e.g., Petition at 2.
`
`2.
`
`The Petition Shows that the Massachusetts Action Is a
`Related Matter
`
`Because the Massachusetts Action involves six patents that are related to the
`
`’427 patent, it is a matter that could affect this proceeding or be affected by this
`
`proceeding. The pending petition demonstrates this point in its proposed claim
`
`constructions, where Zoll Lifecor identifies many of the same terms for
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`construction in the pending petition as it does in the pending petitions on the six
`
`patents in the Massachusetts Action.
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`Specifically, in this proceeding, the petitioner seeks to have the following six
`
`claim terms construed: “monitoring,” “a function of,” “energy source,” “truncated
`
`biphasic (multiphasic) exponential waveform,” “patient-dependent electrical
`
`parameter,” and “discharge parameter.” Petition at 5–10. Those same terms
`
`appear in one or more of the six related patents at issue in the Massachusetts
`
`Action, and petitioner seeks to have most of those terms construed in the petitions
`
`for inter partes review that it filed for the patents in the Massachusetts Action. See
`
`IPR2013-00618 (for U.S. Patent No. 5,607,454), Petition at 6–7 (identifying five of
`
`those six claim terms for construction); IPR2013-00613 (for U.S. Patent No.
`
`5,735,879), Petition at 6–10 (identifying five of those six claim terms for
`
`construction); IPR2013-00616 (for U.S. Patent No. 5,749,905), Petition at 5–8
`
`(identifying four of those six claim terms for construction); IPR2013-00609 (for
`
`U.S. Patent No. 5,836,978), Petition at 6–9 (identifying four of those six claim
`
`terms for construction); IPR2013-00612 (for U.S. Patent No. 5,803,927), Petition
`
`at 6–8 (identifying four of those six claim terms for construction); IPR2013-00615
`
`(for U.S. Patent No. 6,047,212), Petition at 5–6 (identifying one of those six claim
`
`terms for construction). Given the substantial overlap in identified terms and the
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`similarity of the arguments made in support of those terms, the petitioner has itself
`
`demonstrated the relatedness of the Massachusetts Action.
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`Moreover, the term “monitoring” that it seeks to have construed in the
`
`pending petition, as well as five of the petitions filed on the patents in the
`
`Massachusetts Action, was construed in the Massachusetts Action. Exhibit 2003 at
`
`9–11 (Memorandum & Order, Koninklijke Philips Elecs. N.V. v. Zoll Med. Corp.,
`
`Civ. A. No. 1:10-cv-11041 (D. Mass. Nov. 26, 2012), ECF No. 106)
`
`(“Massachusetts Action Claim Construction Order”). The petitioner not only fails
`
`to identify that decision, it fails to acknowledge that the court in the Massachusetts
`
`Action rejected the construction that petitioner proposes here. See infra at
`
`§ III.C.1.
`
`The claim construction order from the Massachusetts Action is particularly
`
`relevant here because the ’427 patent is expired. Claims of expired patents are
`
`construed as they would be in district court pursuant to Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005), rather
`
`than under
`
`the broadest reasonable
`
`interpretation. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Manual of
`
`Patent Examining Procedure § 2258 (8th ed., Rev. 7) (July 2008). As a result, the
`
`court in the Massachusetts Action applied the same standard that should be applied
`
`here, making the court’s decision not only relevant but one that can affect this
`
`proceeding.
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`The
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`identified claim construction
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`Case IPR2013-00606
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`the
`
`issues only highlight
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`that
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`Massachusetts Action is a proceeding that could affect this proceeding and thus
`
`constitutes a related matter that should have been identified, but was not.
`
`3.
`
`Petitioner Has Admitted That the Pennsylvania Action,
`Which Includes Claims Asserting the ’427 Patent, Relates
`Substantially to the Unreported Massachusetts Action
`
`In the Pennsylvania Action, Zoll Lifecor not only acknowledged that most of
`
`the patents asserted in that action had been asserted in the Massachusetts Action,
`
`but also repeatedly described the substantial similarity between those two actions.
`
`As a result, Zoll Lifecor’s failure to identify the Massachusetts Action as a related
`
`matter in this proceeding cannot be considered inadvertent or based on lack of
`
`knowledge.
`
`For instance, when seeking to have the Pennsylvania Action stayed based on
`
`the Massachusetts Action, Zoll Lifecor emphasized the overlap between the two
`
`actions and argued that the Massachusetts Action would impact the Pennsylvania
`
`Action. Ex. 2004 at 5 (Memorandum in Support of Zoll’s Motion to Stay,
`
`Koninklijke Philips Elecs. N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369
`
`(W.D. Pa. Nov. 9, 2012), ECF No. 27) (“Pennsylvania Action Stay Brief”)
`
`(“Because of the similarities of the issues presented in [the Pennsylvania Action]
`
`. . . and the Massachusetts [Action] . . . ZOLL respectfully requests that this Court
`
`stay this action until the conclusion of the liability phase of the Massachusetts
`
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`[Action].”); see also id. at 9 (“The Massachusetts Court’s analysis and decisions
`
`may also bear on the consideration of issues in this case.”); Ex. 2005 at 1 (Zoll’s
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`Supplemental Brief in Support of its Motion to Stay, Koninklijke Philips Elecs.
`
`N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa. Feb. 1, 2013),
`
`ECF No. 44) (“Pennsylvania Action Supplemental Stay Brief”) (“Stay Is
`
`Warranted Given The Substantial Overlap Of Issues With Those In Play In The
`
`Massachusetts [Action]”).
`
`In support of its assertions, Zoll Lifecor highlighted certain facts showing
`
`the relatedness of the two actions: (1) six of the eight patents asserted in the
`
`Pennsylvania Action were also asserted in the Massachusetts Action; (2) all eight
`
`patents, including the ’427 patent, “relate to defibrillator technology” in general;
`
`and (3) all eight patents “were the subject of the parties’ licensing negotiations.”
`
`Ex. 2004 at 5 (Pennsylvania Action Stay Brief). Further, Zoll Lifecor stated that
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`the “other two patents” not asserted in the Massachusetts Action, which includes
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`the ’427 patent, “are ‘related’ to the[] [six asserted] patents, in that they share []
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`common specifications and claim priority to the same parent applications as the six
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`overlapping patents.” Id.
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`Based on the common issues and patents between the two actions, Zoll
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`Lifecor further argued that “the results in Massachusetts could moot this entire
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`action . . . .” Id. at 9. For example, in numerous pleadings, Zoll Lifecor
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`highlighted the fact that findings related to invalidity or unenforceability could
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`directly impact the Pennsylvania Action, including claims related to the “non-
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`overlapping” ’427 patent:
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` “Of course, a finding in the Massachusetts [Action] that
`any or all of the asserted claims in the six patents there
`that overlap with patents in this case are invalid or
`unenforceable will moot those claims for purposes of this
`case. . . . Moreover, the subsidiary issues bearing on
`invalidity and inequitable conduct that will be addressed
`in the Massachusetts [Action] potentially have direct
`applicability to the issues in this case, on both the six
`overlapping patents and
`the
`two non-overlapping
`patents.”
` Ex. 2005 at 2
`(Pennsylvania Action
`Supplemental Stay Brief) (emphasis added);
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` “It cannot be disputed that any verdict in Massachusetts
`will be a significant development in the parties’ broader
`patent war, and will provide a greater degree of clarity
`than the parties currently possess, particularly in view of
`the high degree of overlap between this case and the
`Massachusetts case.” Ex. 2006 at 6 (Zoll Lifecor
`Corporation’s Opposition to Philips’s Motion to Lift
`Stay, Koninklijke Philips Elecs. N.V. v. Zoll Lifecor
`Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa. July 8,
`2013), ECF No. 85) (“Pennsylvania Action Brief to
`Maintain Stay”) (emphasis added);
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` “In short, there is substantial overlap of issues in this
`case as in the Massachusetts matter, and the potential for
`streamlining the issues in this case, and/or offering a
`more fully developed record, as a consequence of pausing
`this action for several more months until the liability trial
`in the Massachusetts Matter concludes warrants the stay
`ZOLL seeks.” Ex. 2005 at 3 (Pennsylvania Action
`Supplemental Stay Brief) (emphasis added).
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`In precisely the same manner that a finding of invalidity or unenforceability in the
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`Massachusetts Action could have affected the Pennsylvania Action, including
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`claims involving the ’427 patent (as argued by Zoll Lifecor), such a finding could
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`also “affect . . . a decision in th[is] proceeding.” See 37 C.F.R. § 42.8(b)(2).
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`Moreover, because the Massachusetts Action was pending when the petition was
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`filed, it also represents a “judicial . . . matter that would . . . be affected by, a
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`decision in this proceeding.” See 37 C.F.R. § 42.8(b)(2).
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`In addition to these admissions about the relatedness of the issues in the
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`Pennsylvania Action and the Massachusetts Action, Zoll Lifecor admitted that the
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`settlement negotiations between “the parties” (actually, as discussed below, infra at
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`§ II.B.2, between Zoll Medical and Philips) involved potential settlement of both
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`of those actions simultaneously. Ex. 2006 at 1 (Pennsylvania Action Brief to
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`Maintain Stay) (discussing mediation in the Pennsylvania Action potentially
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`leading to “global resolution to the parties’ disputes,” including the Massachusetts
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`Action); Ex. 2004 at 1 (Pennsylvania Action Stay Brief) (“All of the asserted
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`patents [in the Pennsylvania Action] were discussed in licensing negotiations
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`between the parties dating back to 2008 . . . .”); id. at 9 (noting in a pleading in the
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`Pennsylvania Action that “the results in Massachusetts . . . will likely further drive
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`settlement negotiations . . . .”).
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`Further, Zoll Lifecor argued that the similarity of the issues between the two
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`actions would, absent a stay, lead to “overlapping and duplicative discovery in
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`both cases . . . .” Id.
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`Based on these prior statements by Zoll Lifecor, the Pennsylvania court
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`granted the requested stay (but required mediation by the parties), delaying that
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`action for over five months. Ex. 2007 (Memorandum Order, Koninklijke Philips
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`Elecs. N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa. Feb. 6,
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`2013), ECF No. 45); Ex. 2008 (Memorandum Order, Koninklijke Philips Elecs.
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`N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa. July 24, 2013),
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`ECF No. 90). Those statements, however, cannot be reconciled with Zoll Lifecor’s
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`current failure to include the Massachusetts Action in the pending petition as a
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`related matter. See Petition at 2. Zoll Lifecor’s prior statements showing the
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`relatedness of the Massachusetts Action, the Pennsylvania Action, and the pending
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`proceeding further undermine its omission and provide additional support for
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`concluding that Zoll Lifecor violated 37 C.F.R. § 42.8(b)(2).
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`Because the regulations require that a petitioner identify related matters “as
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`part of the petition” in order to receive a filing date, see 37 C.F.R. §§ 42.8, 42.104,
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`42.106, and because
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`the petitioner’s omission of
`
`the admittedly related
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`Massachusetts Action was not inadvertent, the filing date for this petition should be
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`vacated.
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`B.
`
`The Filing Date Should Also be Vacated Based on Zoll Lifecor’s
`Failure to Identify all the Real Parties in Interest
`
`In the pending petition, Zoll Lifecor identified only itself as a real party in
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`interest. See Petition at 2. Prior public statements by both Zoll Medical and Zoll
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`Lifecor, however, show that Zoll Medical is also a real party in interest in this
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`proceeding.
`
`One common consideration in helping to identify a “real party in interest”—
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`as highlighted in the Patent and Trademark Office’s Patent Trial Practice Guide—
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`is “whether the non-party exercised or could have exercised control over a party’s
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`participation in a proceeding.” See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,759 (Aug. 14, 2012) (to be codified at 37 C.F.R. pt. 42) (the
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`“Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880, 895 (2008) (noting an
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`exception to the rule against non-party preclusion if the party “‘assume[d] control’
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`over the litigation in which that judgment was rendered”) and 18A Charles Alan
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`Wright, Arthur R. Miller & Edward A. Cooper, Federal Practice and Procedure §
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`4451 (2d ed. 2011)); see Practice Guide, 77 Fed. Reg. at 48,759 (stating that the
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`“‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or
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`parties at whose behest the petition has been filed”). Here, Zoll Medical has
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`exercised control over Zoll Lifecor’s business in general, including its legal
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`proceedings, and also could have exercised control.
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`1.
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`Public Documents Show that Parent Zoll Medical Controls
`Its Wholly Owned Subsidiary, Zoll Life