Case: 14-1588 Document: 18 Page: 1 Filed: 08/25/2014
`
`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ZOLL LIFECOR CORPORATION,
`Appellant,
`
`v.
`
`PHILIPS ELECTRONICS NORTH AMERICA
`CORPORATION AND KONINKLIJKE PHILIPS
`ELECTRONICS N.V.,
`Appellees.
`______________________
`
`2014-1588, -1589, -1590, -1591, -1592, -1593, -1594, -1595
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2013-00606,
`IPR2013-00607,
`IPR2013-00609,
`IPR2013-00612,
`IPR2013-00613,
`IPR2013-00615,
`IPR2013-00616, and IPR2013-00618.
`______________________
`
`ON MOTION
`______________________
`
`Before O’MALLEY, WALLACH, and HUGHES, Circuit Judges.
`O’MALLEY, Circuit Judge.
`O R D E R
`
`
`
`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ZOLL LIFECOR CORPORATION,
`Appellant,
`
`v.
`
`PHILIPS ELECTRONICS NORTH AMERICA
`CORPORATION AND KONINKLIJKE PHILIPS
`ELECTRONICS N.V.,
`Appellees.
`______________________
`
`2014-1588, -1589, -1590, -1591, -1592, -1593, -1594, -1595
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2013-00606,
`IPR2013-00607,
`IPR2013-00609,
`IPR2013-00612,
`IPR2013-00613,
`IPR2013-00615,
`IPR2013-00616, and IPR2013-00618.
`______________________
`
`ON MOTION
`______________________
`
`Before O’MALLEY, WALLACH, and HUGHES, Circuit Judges.
`O’MALLEY, Circuit Judge.
`O R D E R
`
`
`
`Case: 14-1588 Document: 18 Page: 2 Filed: 08/25/2014
`
`
`
` 2
`
` ZOLL LIFECOR CORPORATION v. PHILIPS ELECTRONICS
`
`ZOLL Lifecor Corporation (“ZOLL Lifecor”) has ap-
`
`pealed from decisions of the Director of the United States
`Patent & Trademark Office, through her delegee, the
`Patent Trial and Appeal Board, denying petitions for inter
`partes review of patents owned by Koninklijke Philips
`Electronics N.V. and Philips Electronics North America
`Corporation (“Philips”). We grant Philips’ motions to
`dismiss.
`
`I.
`In 2006, ZOLL Medical Corporation acquired a then
`
`separate entity, Lifecor, Inc. After the acquisition, the
`Lifecor business operated as a wholly-owned subsidiary of
`ZOLL Medical under the name ZOLL Lifecor Corporation.
` On June 18, 2010, Philips filed a complaint against
`ZOLL Medical in the federal district court in Massachu-
`setts. As amended, Philips’ complaint claimed that ZOLL
`Medical infringed a number of its patents, including U.S.
`Patent Nos. 5,607,454 (the “’454 patent”), 5,749,905 (the
`“’905 patent”), 5,803,927 (the “’927 patent”), 5,836,978
`(the “’978 patent”), 6,047,212 (the “’212 patent”), and
`5,735,879 (the “’879 patent”).
`On September 21, 2012, Philips filed a complaint
`against ZOLL Lifecor in the federal district court in the
`Western District of Pennsylvania, and served ZOLL
`Lifecor on the same day. The complaint asserted in-
`fringement of the ’454 patent, the ’905 patent, the ’927
`patent, the ’978 patent, the ’212 patent, the ’879 patent,
`as well as U.S. Patent Nos. 5,593,427 and 5,749,904.
` On September 23, 2013, ZOLL Lifecor filed petitions
`for inter partes review seeking to invalidate the eight
`patents asserted in the Pennsylvania action. The Board
`rejected the petitions as untimely, relying on 35 U.S.C.
`§ 315(b), which says that 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
`
`
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`Case: 14-1588 Document: 18 Page: 3 Filed: 08/25/2014
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` ZOLL LIFECOR CORPORATION v. PHILIPS ELECTRONICS
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` 3
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`interest or privy of the petitioner is served with a com-
`plaint alleging infringement of the patent.” These ap-
`peals followed.
`
`II.
`This court is only authorized to hear “an appeal from
`
`a decision of the Patent Trial and Appeal Board of the
`United States Patent and Trademark Office with respect
`to a[n] . . . inter partes review under title 35.” 28 U.S.C.
`§1295(a)(4)(A) (emphasis added). We agree with Philips
`that these non-institution decisions fall outside of our
`limited review authority.
`
`As we explained in St. Jude Medical, Cardiology
`Division, Inc. v. Volcano Corp., 749 F.3d 1373, 1375-76
`(Fed. Cir. 2014), what emerges from title 35 is a two-step
`procedure: “the Director’s decision whether to institute a
`proceeding, followed (if the proceeding is instituted) by
`the Board’s conduct of the proceeding and decision with
`respect to patentability.”
`The statute authorizes appeals to this court only from
`“the final written decision” of the Board. See 35 U.S.C.
`§ 319; 35 U.S.C. § 141. And title 35 provides “no authori-
`zation to appeal a non-institution decision[.]” St. Jude,
`749 F.3d at 1375. In fact, in 35 U.S.C. § 314(d), the
`statute “contains a broadly worded bar on appeal” from
`such decisions. Id. at 1376. The upshot is that “[t]he
`statute provides for an appeal to this court only of the
`Board’s decision at the second step, not the Director’s
`decision at the first step.” Id.
`
`ZOLL Lifecor tries to distinguish St. Jude on the
`ground that its petitions for inter partes review were
`rejected under § 315(b). But its factual premise is incor-
`rect. The Board denied St. Jude’s petition as untimely
`under § 315(b). See id. at 1375 (discussing the Board’s
`decision that a counterclaim constitutes a complaint
`within the meaning of section 315(b)). Rejecting St.
`
`
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`Case: 14-1588 Document: 18 Page: 4 Filed: 08/25/2014
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`
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` 4
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` ZOLL LIFECOR CORPORATION v. PHILIPS ELECTRONICS
`
`Jude’s argument that § 314(d) does not preclude this
`court’s review of the Director’s decision, we concluded that
`a petitioner could not appeal from a decision to deny
`institution based on § 315(b). See id. at 1375-76.
`ZOLL Lifecor further argues that § 1295 gives explicit
`and broad jurisdiction to this court over inter partes
`review decisions. But we have explained “[t]hat provision
`is most naturally read to refer precisely to the Board’s
`decision under section 318(a) on the merits of the inter
`partes review, after it ‘conducts’ the proceeding that the
`Director has ‘instituted.’” Id. at 1376. Because ZOLL
`Lifecor’s appeals fall outside of this statutory grant of
`jurisdiction, we grant Philips’ motions to dismiss.
`
`Accordingly,
`IT IS ORDERED THAT:
`
`(1) The motions to dismiss are granted.
`(2) Each side shall bear its own costs.
`(3) ZOLL Lifecor’s motion for oral argument is de-
`nied.
`(4) The revised official caption is reflected above.
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`FOR THE COURT
`
` /s/ Daniel E. O’Toole
`
` Daniel E. O’Toole
` Clerk of Court
`
`
`
`
`
`
`
`
`
`
`s19
`
`ISSUED AS A MANDATE: August 25, 2014
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