Trials@uspto.gov
`571-272-7822
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` Paper 15
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`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZOLL LIFECOR CORPORATION
`Petitioner
`
`v.
`
`PHILIPS ELECTRONICS NORTH AMERICA CORP. and
`KONINKLIJKE PHILIPS N.V.
`Patent Owner
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`571-272-7822
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` Paper 15
`
`
`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZOLL LIFECOR CORPORATION
`Petitioner
`
`v.
`
`PHILIPS ELECTRONICS NORTH AMERICA CORP. and
`KONINKLIJKE PHILIPS N.V.
`Patent Owner
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`
`I.
`
`INTRODUCTION
`
`ZOLL Lifecor Corporation (“Petitioner”) filed a corrected petition
`
`requesting inter partes review of claims 1-7 (the “challenged claims”) of
`
`U.S. Patent No. 5,836,978 (Ex. 1001, “the ’978 patent”). Paper 1 (“Pet.”).
`
`Philips Electronics North America Corporation (“Patent Owner”) filed a
`
`preliminary response. Paper 9 (“Prelim. Resp.”). The Board authorized the
`
`Petitioner to file a brief addressing the privity and real party-in-interest
`
`issues raised in the preliminary response. Paper 12. Petitioner filed a brief
`
`addressing those issues. Paper 13 (“Br.”). We have jurisdiction under
`
`35 U.S.C. § 314.
`
`Upon consideration of the petition, we determine that ZOLL Medical,
`
`Petitioner’s parent company, is a real party-in-interest that was served with a
`
`complaint alleging infringement of the ’978 patent more than one year
`
`before the filing of this petition. The petition is therefore untimely under
`
`35 U.S.C. § 315(b). Moreover, because the petition does not identify ZOLL
`
`Medical as a real party-in-interest, the petition fails to identify “all the real
`
`parties in interest,” as required by 35 U.S.C. § 312(a). Accordingly, the
`
`petition is denied.
`
`A. Related Proceedings
`
`The ’978 patent is involved in a co-pending case filed against
`
`Petitioner on September 21, 2012, and captioned Koninklijke Philips Elecs.
`
`N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369 (W.D. Pa.) (the
`
`“Pennsylvania Action”). Pet. 2; Prelim. Resp. 5. Petitioner was served with
`
`a complaint in that proceeding on September 21, 2012. Prelim. Resp. 5
`2
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`Case IPR2013-00609
`Patent 5,836,978
`
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`(citing Ex. 2006). The Pennsylvania Action also involves seven other
`
`patents, all related to the ’978 patent. Prelim. Resp. 5-6. Each of these
`
`patents, including the ’978 patent, claims priority to the same application:
`
`No. 08/103,837, filed on August 6, 1993. Id. at 5; Ex. 1001.
`
`The ’978 patent also is involved in a co-pending case filed against
`
`Petitioner’s parent company, ZOLL Medical Corporation (“ZOLL
`
`Medical”), on June 18, 2010, and captioned Koninklijke Philips Elecs. N.V.
`
`v. Zoll Med. Corp., Civ. A. No. 1:10-cv-11041 (D. Mass.) (the
`
`“Massachusetts Action”). Prelim. Resp. 4-5. ZOLL Medical was served
`
`with an amended complaint alleging infringement of six of the eight patents
`
`at issue in the Pennsylvania Action, including the ’978 patent, on October
`
`13, 2010. Prelim. Resp. 4-5 (citing Ex. 2004).
`
`Petitioner also has filed petitions for inter partes review of the other
`
`seven patents in the Pennsylvania Action: IPR2013-00606 (U.S. Patent No.
`
`5,593,427), IPR2013-00607 (U.S. Patent No. 5,749,904), IPR2013-00612
`
`(U.S. Patent No. 5,803,927), IPR2013-00613 (U.S. Patent No. 5,735,879),
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`IPR2013-00615 (U.S. Patent No. 6,047,212), IPR2013-00616 (U.S. Patent
`
`No. 5,749,905), and IPR2013-00618 (U.S. Patent No. 5,607,454). Pet. 2;
`
`Prelim. Resp. 5-6.
`
`The Petition identified as a related matter the Pennsylvania Action,
`
`but not the Massachusetts Action. Pet. 2. On January 3, 2014, after Patent
`
`Owner filed its Preliminary Response, Petitioner amended its Mandatory
`
`Notice to include the Massachusetts Action. Paper 11 at 2-3.
`
`3
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`Case IPR2013-00609
`Patent 5,836,978
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`
`II. DISCUSSION
`
`A. Factual Background
`
`ZOLL Medical is a manufacturer of resuscitation devices and related
`
`software solutions. Ex. 2001. On April 10, 2006, ZOLL Medical
`
`announced that it had acquired the assets and business of Lifecor, Inc., a
`
`privately held company that designs, manufactures, and markets a wearable
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`external defibrillator system. Id. At the time ZOLL Medical acquired
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`Lifecor, Inc., ZOLL Medical announced that it would operate the Lifecor,
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`Inc. business through the ZOLL Lifecor subsidiary, based in Pittsburgh,
`
`Pennsylvania. Id. A parent-subsidiary relationship was formed in 2006
`
`when ZOLL Medical acquired Lifecor, Inc. It is undisputed that ZOLL
`
`Lifecor, Petitioner, is a wholly-owned subsidiary of ZOLL Medical. Prelim.
`
`Resp. 1; Br. 1.
`
`After the acquisition, ZOLL Medical referred to itself and Petitioner
`
`collectively as “ZOLL.” Ex. 2008 (ZOLL Medical’s Annual Report, Form
`
`10-K, dated Dec. 15, 2006). In filed public financial statements, ZOLL
`
`Medical asserted that it “now manufactures and markets [a] wearable
`
`external defibrillator system [i.e., LifeVest] through its subsidiary, ZOLL
`
`Lifecor Corporation.” Ex. 2008 at 10. Under the ZOLL brand, ZOLL
`
`Medical used a dedicated sales force to sell Petitioner’s LifeVest product.
`
`Ex. 2008 at 19. In 2008, ZOLL Medical asserted in public financial
`
`documents that ZOLL was conducting clinical trials related to the LifeVest
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`product. Ex. 2010 at 27.
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`4
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`Patent 5,836,978
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`The LifeVest is Petitioner’s only product, which is marketed on the
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`ZOLL Medical website. Ex. 2011.
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`Petitioner sought a stay of the Pennsylvania Action based on the
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`overlap with, and the impact of, the Massachusetts Action. Ex. 2015 at 5.
`
`Petitioner took the position that issues of invalidity addressed in the
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`Massachusetts Action would be directly applicable to the eight patents
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`involved in the Pennsylvania Action. Ex. 2025 at 2. The district court
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`granted a stay of the Pennsylvania Action, and required the parties to
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`mediate. Prelim. Resp. 36-37 (citing Ex. 2027). Three officers of ZOLL
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`Medical, which is not a party to the Pennsylvania Action, attended the
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`mediation on behalf of Petitioner. Ex. 2017, 6-7, 9; compare Ex. 2018 with
`
`Ex. 2019. One of those officers, Mr. Grossman, is also Petitioner’s
`
`Secretary, and provides legal guidance to both ZOLL Medical and
`
`Petitioner. Br. 5.
`
`To maintain the stay, Petitioner again relied on the “high degree of
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`overlap between this [Pennsylvania Action] and the Massachusetts
`
`[Action],” and that resolution of the parties’ negotiations with Patent Owner
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`involved a “global resolution” that included both pending Actions. Ex. 2016
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`at 6. Petitioner argued against ramping up activity in the Pennsylvania
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`Action because the parties were focusing on preparing for the trial in the
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`Massachusetts Action. Ex. 2016 at 3-4.
`
`The instant Petition for inter partes review was filed on September 23,
`
`2013. Paper 1. The petitions rely on declarations from the same expert
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`5
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`Patent 5,836,978
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`witness disclosed in the Massachusetts Action on behalf of ZOLL Medical.
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`Prelim. Resp. 13 (citing Exs. 1003, 2021).
`
`B. Arguments Presented
`
`Patent Owner argues that the close relationship between Petitioner and
`
`ZOLL Medical support its contention that ZOLL Medical is both a “real
`
`party-in-interest and a privy of the Petitioner.” Prelim. Resp. 24. Patent
`
`Owner further argues that ZOLL Medical’s close involvement in the
`
`Pennsylvania Action shows control of Petitioner in the Pennsylvania Action
`
`and in this proceeding. Prelim. Resp. 12-14. Furthermore, Patent Owner
`
`argues that ZOLL Medical could have controlled Petitioner’s involvement in
`
`this proceeding because:
`
`(1) ZOLL Medical has the legal right of a parent corporation to
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`control its wholly-owned subsidiary when there are common interests and
`
`the relationship justifies the parent’s control, id.at 15-16 (citing Copperweld
`
`Corp. v. Independence Tube Corp., 467 U.S. 752, 771-72 (1984)); and
`
`(2) the Federal Circuit has recognized the legal right of a parent
`
`corporation to control an administrative proceeding, id. at 16-17 (citing
`
`Dalton v. Honda Motor Co., 425 F. App’x 886, 890 (Fed. Cir. 2011)
`
`(dealing with standing by a parent corporation having a “real interest” in a
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`TTAB proceeding)); and
`
`(3) a favorable outcome in this proceeding would directly benefit
`
`ZOLL Medical, id. at 17-18 (citing Ex. 2002 at 11-12; Ex. 2005 at 13-14).
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`6
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`In response, Petitioner argues that ZOLL Medical is not a real party-
`
`in-interest because (1) Petitioner, not ZOLL Medical, has the greater liability
`
`for infringement of the patents for which inter partes review is requested;
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`and (2) Petitioner is paying for and supervising the inter partes reviews and
`
`district court litigation without compensation from ZOLL Medical. Br. 3-5
`
`(citing Exs. 1015-1018).
`
`Petitioner further argues that had the Board allowed testimonial
`
`evidence,1 Petitioner would have established facts that show:
`
`(1) Petitioner’s management develops the plans and budget for Petitioner’s
`
`business, which are presented to ZOLL Medical for approval, as is typical in
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`a parent-subsidiary relationship, but the direction is provided from ground
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`up, not top down; (2) ZOLL Medical does not hold the LifeVest regulatory
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`approval, does not control LifeVest research, development, and
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`manufacture, and does not control LifeVest marketing, sales, leasing, and
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`revenue collection; (3) Petitioner is paying the costs of the litigation and the
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`IPRs, and is not being compensated by ZOLL Medical for those costs; and
`
`(4) Petitioner’s management is supervising the conduct of the IPRs and the
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`litigation against Petitioner. Br. 4-5.
`
`
`
`1 We note that the Board’s authorization to file a brief on the issue of privity
`and real party-in-interest gave Petitioner discretion to file all evidence
`supporting Petitioner’s arguments. Petitioner did not request authorization
`to file testimony and such request was not precluded. See Paper 12.
`
`7
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`Case IPR2013-00609
`Patent 5,836,978
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`Petitioner further argues that Patent Owner’s allegations are
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`unsupported insofar as (1) Petitioner controls its hiring; (2) Petitioner was
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`represented at settlement by Mr. Grossman, its Secretary; (3) the use of
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`common counsel is not evidence of control; (4) the use of “we” in an SEC
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`filing is not evidence of control; and (5) the LifeVest facility is subject to an
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`obligation to ZOLL Medical, but not to its control. Br. 5-6 (citing Exs.
`
`1016, 1019, 1020).
`
`C. 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b)
`
`Section 315(b) of Title 35 of the United States Code provides:
`
`(b) PATENT OWNER’S ACTION.—An inter partes review
`may not be instituted if the petition requesting the proceeding is
`filed more than 1 year after the date on which the petitioner,
`real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a
`request for joinder under subsection (c).
`
`The legislative history of 35 U.S.C. § 315(b) indicates that Congress
`
`intended inter partes reviews to “provid[e] quick and cost effective
`
`alternatives to litigation.” H.R.REP. NO. 112-98, at 48 (2011), as reprinted
`
`in 2011 U.S.C.C.A.N. 67, 78. The legislative history indicates also that 35
`
`U.S.C. § 315(b) was intended to set a “deadline for allowing an accused
`
`infringer to seek inter partes review after he has been sued for
`
`infringement.” 157 CONG. REC. S5429 (daily ed. Sept. 8, 2011) (statement
`
`of Sen. Kyl). The deadline helps to ensure that inter partes review is not
`
`used as a “tool[] for harassment” by “repeated litigation and administrative
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`8
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`Patent 5,836,978
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`attacks.” H.R. REP. NO. 112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at
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`78. Allowing such attacks “would frustrate the purpose of the section as
`
`providing quick and cost effective alternatives to litigation.” Id.
`
`Rule 42.101 of Section 37 of the Code of Federal Regulations
`
`provides:
`
`A person who is not the owner of a patent may file with the
`Office a petition to institute an inter partes review of the patent
`unless:
`
`. . .
`
`(b) The petition requesting the proceeding is filed more than
`one year after the date on which the petitioner, the petitioner's
`real party-in-interest, or a privy of the petitioner is served with a
`complaint alleging infringement of the patent . . . .
`
`37 C.F.R. § 42.101; 77 Fed. Reg. 48,688 (Aug. 14, 2012).
`
`A threshold issue for the Board to determine is whether ZOLL
`
`Medical is a real party-in-interest or privy under 35 U.S.C. § 315(b) and 37
`
`C.F.R. § 42.101(b).
`
`D. Real Party-in-Interest Analysis
`
`Patent Owner contends that ZOLL Medical controls and could have
`
`controlled both the business and legal proceedings of its wholly-owned
`
`subsidiary Zoll Lifecor. Prelim. Resp. 1-2. In response, Petitioner argues
`
`that: (1) control is the wrong standard to apply in the real party-in-interest
`
`determination; (2) Petitioner is the sole real party-in-interest; and (3)
`
`Petitioner is not estopped because the parties, the accused products, and the
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`9
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`Case IPR2013-00609
`Patent 5,836,978
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`asserted claims are different in the Pennsylvania and Massachusetts Actions.
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`Br. 1.
`
`“Whether a party who is not a named participant in a given
`
`proceeding nonetheless constitutes a ‘real party-in-interest’ . . . to that
`
`proceeding is a highly fact-dependent question.” 77 Fed. Reg. at 48,759.
`
`“[T]he spirit of that formulation as to IPR . . . proceedings means that, at a
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`general level, the ‘real party-in-interest’ is the party that desires review of
`
`the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself,
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`and/or it may be the real party or parties at whose behest the petition has
`
`been filed.” Id. (emphasis added). “Courts invoke the terms ‘real party-in-
`
`interest’ and ‘privy’ to describe relationships and considerations sufficient to
`
`justify applying conventional principles of estoppel and preclusion.” Id.
`
`The determination of whether a non-party is a real party-in-interest involves
`
`a consideration of “control.” Id.
`
`Factors for determining actual control or the opportunity to control
`
`include existence of a financially controlling interest in the petitioner. 77
`
`Fed. Reg. at 48,617 (discussing the mandatory notice codified in 37 C.F.R.
`
`§ 42.8). Additional relevant factors include: the non-party’s relationship
`
`with the petitioner; the non-party’s relationship to the petition itself,
`
`including the nature and/or degree of involvement in the filing; and the
`
`nature of the entity filing the petition. 77 Fed. Reg. at 48,760.
`
`The non-party’s participation may be overt or covert, and the evidence
`
`may be direct or circumstantial, but the evidence as a whole must show that
`
`the non-party possessed effective control from a practical standpoint.
`
`10
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`Patent 5,836,978
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`Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). The
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`inquiry is not based on isolated facts, but rather must consider the totality of
`
`the circumstances. Id.
`
`After considering the evidence presented by Petitioner and Patent
`
`Owner we are persuaded by the evidence presented that ZOLL Medical is a
`
`real party-in-interest for purposes of 35 U.S.C. § 315(b) because it “‘has the
`
`actual measure of control or opportunity to control that might reasonably be
`
`expected between two formal coparties.’” 77 Fed. Reg. at 48,759 (quoting
`
`Wright & Miller § 4451). We are persuaded that the evidence presented by
`
`Patent Owner shows sufficiently that ZOLL Medical has exercised
`
`consistent control over Petitioner’s business since 2006. The relationship is
`
`one that has been very close with aligned interests and sufficient
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`opportunities for ZOLL Medical to control all aspects of Petitioner’s
`
`business, including controlling this inter partes review.
`
`Petitioner acknowledges that ZOLL Medical controls 100% of
`
`Petitioner and authorizes its budget and plans. Br. 4. Based on the record
`
`before us, such control and authorization of budget and plans has been
`
`ongoing since ZOLL Medical acquired Petitioner in 2006, and, importantly,
`
`since at least 2010 when ZOLL Medical was served a complaint alleging
`
`infringement of the ’978 patent. Although Petitioner asserts that it is paying
`
`the costs and supervising the conduct of the IPRs, and that Petitioner’s
`
`management is held responsible for its performance, Petitioner also
`
`acknowledges that its budgets and plans are approved by ZOLL Medical.
`
`Id. What Petitioner does not state affirmatively also is telling—that neither
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`11
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`Case IPR2013-00609
`Patent 5,836,978
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`Mr. Grossman, who by admission provides legal counsel for both ZOLL
`
`Medical and Petitioner, nor any other legal counsel for ZOLL Medical,
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`provided input into the preparation of the IPRs filed by Petitioner.
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`The circumstantial evidence shows unified actions by Petitioner and
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`ZOLL Medical in the “multi-state patent war” (Ex. 2016, 2)—of which the
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`instant IPR is a part—with Patent Owner. While common counsel alone is
`
`not dispositive of control, we are persuaded that Petitioner’s actions have
`
`blurred sufficiently the lines of corporate separation with its parent, ZOLL
`
`Medical, such that ZOLL Medical has had control, or could have controlled
`
`Petitioner, in all aspects of its business. For example, the absence of
`
`Petitioner’s management team, and presence of ZOLL Medical’s
`
`management team, at the court-ordered mediation in the Pennsylvania
`
`Action suggests an involved and controlling parent corporation representing
`
`the unified interests of itself and Petitioner. Ex. 2017, 6-7, 9; compare Ex.
`
`2018 with Ex. 2019.
`
`The Board provided Petitioner with an opportunity to rebut Patent
`
`Owner’s assertions that ZOLL Medical is a real party-in-interest that should
`
`have been identified in its petition in accordance with 37 C.F.R. § 42.8 and
`
`35 U.S.C. § 315(b). Petitioner argued, unpersuasively, that control is not the
`
`legal standard and that its relationship with ZOLL Medical is like that of co-
`
`defendants who face the same plaintiff. Br. 5. We disagree that control is
`
`not a factor to consider. See 77 Fed. Reg. at 48,759. We also are not
`
`persuaded that the relationship between ZOLL Medical and Petitioner
`
`merely is one of co-defendants who face the same plaintiff. Petitioner does
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`12
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`not rebut the other indicia of control over its legal proceedings, such as
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`ZOLL Medical’s management team representing the Petitioner in the court-
`
`ordered mediation in the Pennsylvania Action, and Petitioner’s argument for
`
`a stay in district court on the basis that the parties (ZOLL Medical and
`
`Petitioner) would be busy with the ZOLL Medical trial. Further, we are not
`
`persuaded by Petitioner’s argument that it is not estopped because of the
`
`differences between the Pennsylvania Action and the Massachusetts
`
`Action. Differences between the actions do not overcome the Board’s
`
`determination that a non-party is a real party-in-interest because of
`
`considerations of control.
`
`Based on the foregoing, we determine that ZOLL Medical is a real
`
`party-in-interest for purposes of 35 U.S.C. § 315(b). ZOLL Medical has
`
`been a real party-in-interest since at least the time it was served with the
`
`complaint alleging infringement of the ’978 patent in the Massachusetts
`
`Action. As discussed above, since the filing of the Massachusetts Action, in
`
`2010, ZOLL Medical and Petitioner have enjoyed four years of a close
`
`parent/wholly-owned-subsidiary relationship. Thus, Patent Owner has
`
`provided persuasive evidence that ZOLL Medical was a real party-in-interest
`
`at least as of October 13, 2010, when it was served with the complaint in the
`
`Massachusetts Action. Because ZOLL Medical is a real party-in-interest
`
`that was served with a complaint alleging infringement of the ’978 patent
`
`more than one year before the filing of this petition on September 23, 2013,
`
`the petition is untimely under 35 U.S.C. § 315(b).
`
`13
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`E. Privity Analysis
`
`We also are persuaded by Patent Owner’s arguments that ZOLL
`
`Medical is a privy of Petitioner under 35 U.S.C. § 315(b). Prelim. Resp. 24.
`
`The evidence presented by Patent Owner sufficiently shows that ZOLL
`
`Medical and Petitioner have been in privity since ZOLL Medical acquired
`
`Petitioner’s assets in 2006, and at least since 2010 when ZOLL Medical was
`
`served a complaint alleging infringement of the ’978 patent.
`
`Notwithstanding Petitioner’s assertions of corporate formalities, the
`
`facts show ZOLL Medical making public financial disclosures concerning
`
`its ownership and participation in all aspects of Petitioner’s operation, from
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`sales to regulatory approval. See, e.g., Exs. 2008, 2010. For example,
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`Petitioner concedes that ZOLL Medical must approve all of Petitioner’s
`
`plans and budget, and that both companies receive legal counsel from the
`
`same legal representative, Mr. Grossman. Indeed, regardless of whether
`
`ZOLL Medical keeps a tight rein over Petitioner, the evidence presented is
`
`that ZOLL Medical and Petitioner’s interests are aligned—they have
`
`operated continuously with a common corporate consciousness. See
`
`Copperweld, 467 U.S. at 771-72. The relationship between ZOLL Medical
`
`and Petitioner is, and has been, so close that Petitioner and ZOLL Medical
`
`should enjoy the benefits, as well as the burden, of being in privity for
`
`purposes of inter partes review proceedings.
`
`As of the filing of the Massachusetts Action, in 2010, ZOLL Medical
`
`and Petitioner had enjoyed four years of a close parent/wholly-owned-
`
`subsidiary relationship. And by the filing of the Pennsylvania Action, in
`
`14
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`Patent 5,836,978
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`2012, ZOLL Medical and Petitioner represented in unison their interests in
`
`staying the litigation and settling the dispute. Patent Owner has shown that
`
`Petitioner and ZOLL Medical repeatedly held themselves out to the district
`
`court in the Pennsylvania Action as a single entity: ZOLL.
`
`Based on the facts discussed above, the evidence in its totality shows
`
`that the close relationship between ZOLL Medical and Petitioner is not just
`
`one of mere collaboration between two separate and distinct entities. For
`
`example, Petitioner and ZOLL Medical have held themselves out as a
`
`unified entity (“ZOLL”) to allege prejudice in going forward with both
`
`district court cases. Prelim. Resp. 13 (citing Exs. 1003, 2017, 2020, 2021),
`
`10-11 (citing Ex. 2015, 10 (emphasizing the “unfair burden to ZOLL of
`
`serial lawsuits”)). Further, the evidence sufficiently shows that ZOLL
`
`Medical and Petitioner acted in concert in the two litigations. For example,
`
`ZOLL Medical represented Petitioner at the mediation and attempted to
`
`delay the Pennsylvania Action (involving Petitioner) while focusing
`
`resources on the Massachusetts Action (involving ZOLL Medical). This
`
`conduct by Petitioner and ZOLL Medical is not indicative of separate and
`
`distinct entities, as Petitioner argues. To set aside the history of involvement
`
`of ZOLL Medical in the business and legal affairs of Petitioner in favor of
`
`upholding the corporate formality of these entities would contradict the
`
`factor-based analysis of what constitutes sufficient control for a non-party to
`
`be recognized as a privy.
`
`We conclude that ZOLL Medical is a privy under 35 U.S.C. 315(b)
`
`based on the relationship between ZOLL Medical and Petitioner since at
`
`15
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`least 2010 when ZOLL Medical was served a complaint alleging
`
`infringement of the ’978 patent. Because ZOLL Medical is a privy of
`
`Petitioner that was served with a complaint alleging infringement of the ’978
`
`patent more than one year before the filing of this petition, the petition is
`
`untimely under 35 U.S.C. § 315(b).
`
`F. Failure to Comply with 35 U.S.C. § 312(a)
`
`Because ZOLL Medical is a real party-in-interest, the Petition does
`
`not identify “all real parties in interest.” As a result, the Board determines
`
`that the Petition is incomplete.
`
`Section 42.106(b) of Title 37 of the Code of Federal Regulations
`
`provides:
`
`(b) Incomplete petition. Where a party files an incomplete
`petition, no filing date will be accorded, and the Office will
`dismiss the petition if the deficiency in the petition is not
`corrected within one month from the notice of an incomplete
`petition.
`
`Ordinarily, because the Petition is incomplete, the Board would give
`
`Petitioner one month from the date of this decision to correct the deficiency
`
`and list ZOLL Medical as a real party-in-interest. In this instance, however,
`
`curing the omission of ZOLL Medical as a real party-in-interest would be
`
`futile because, even if corrected, the earliest filing date that could be
`
`16
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`accorded to the Petition would not fall within the one-year period specified
`
`by 35 U.S.C. § 315(b).2 Accordingly, we deny this petition as untimely.
`
`III. CONCLUSION
`
`The Board denies the petition because it was not filed within the time
`
`limit imposed by 35 U.S.C. § 315(b) and does not comply with 35 U.S.C.
`
`§ 312(a).
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that the petition is denied and no trial is instituted.
`
`
`
`2 Petitioner was served with a complaint alleging infringement of the ’978
`patent on September 21, 2012. Thus, the one year period expired on
`September 21, 2013. See 35 U.S.C. § 21(b).
`
`17
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`For PETITIONER:
`
`John C. Phillips
`Dorothy P. Whelan
`Fish & Richardson
`phillips@fr.com
`whelan@fr.com
`IPR38855-00091IP1@fr.com
`
`For PATENT OWNER
`
`J. Michael Jakes
`Denise W. DeFranco
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`mike.jakes@finnegan.com
`denise.defranco@finnegan.com
`PTABdocket@finnegan.com
`Philips-Zoll@finnegan.com
`
`18
`
`
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