`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.
`
`PHILIPS ELECTRONICS NORTH AMERICA CORPORATION
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00618
`Patent 5,607,454
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 5,607,454
`
`
`
`
`
`
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 3
`
`A.
`
`The Pending Petition Should Be Denied Under 35 U.S.C.
`§ 315(b) Based on the One-Year Litigation Bar ................................... 3
`
`1.
`
`Philips Served a Complaint on Zoll Medical Alleging
`Infringement of the ’454 Patent Three Years Before Zoll
`Lifecor Filed the Pending Petition .............................................. 4
`
`2.
`
`Zoll Medical Is a Real Party in Interest in this Proceeding ........ 6
`
`a)
`
`b)
`
`Public Documents Show that Parent Zoll Medical
`Controls Its Wholly Owned Subsidiary, Zoll
`Lifecor ............................................................................... 8
`
`Zoll Medical Controls Zoll Lifecor’s Involvement
`in the Pennsylvania Action and in this Proceeding ........ 12
`
`3.
`
`Zoll Medical Is Also a Privy of the Petitioner, Zoll
`Lifecor ....................................................................................... 14
`
`a)
`
`b)
`
`c)
`
`Zoll Medical Is a Privy Because of Its Relationship
`to the Infringing Product ................................................. 14
`
`As Zoll Lifecor’s Corporate Parent, Zoll Medical
`Has Standing, and “Could have Exercised Control
`Over” This Proceeding ................................................... 15
`
`Zoll Medical Is a Privy of the Petitioner, Zoll
`Lifecor, Because Their Relationship Justifies
`Applying Estoppel and Preclusion ................................. 18
`
`4.
`
`The Statute, Prior Board Decisions, and Legislative
`History Support Denying the Pending Petition ........................ 24
`
`
`
`i
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`The Filing Date Should Be Vacated Because Petitioner Did Not
`Identify all Real Parties in Interest or Related Litigations, as
`Required by 35 U.S.C. § 312 and 37 C.F.R. § 42.8 ............................ 28
`
`B.
`
`1.
`
`2.
`
`Zoll Medical Is an Unidentified Real Party in Interest ............. 30
`
`The Petitioner Failed to Identify all Related Matters ............... 31
`
`III. Claim Construction ........................................................................................ 37
`
`A. Overview of the ’454 Patent ................................................................ 37
`
`B.
`
`Claim Construction Standard and Prior Claim Construction
`Decisions ............................................................................................. 39
`
`C.
`
`Claim Terms ........................................................................................ 41
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`“monitoring” ............................................................................. 41
`
`“a function of” ........................................................................... 43
`
`“energy source” ......................................................................... 43
`
`“truncated exponential biphasic waveform” and
`“truncated exponential multiphasic waveform” ....................... 45
`
`“patient-dependent electrical parameter” .................................. 45
`
`“means for selectively limiting current flow through the
`electrodes” ................................................................................. 47
`
`“means for determining whether current flowing to the
`electrodes is below a predetermined level” .............................. 48
`
`“means for delivering a multiphasic waveform without
`the use of an inductor” .............................................................. 48
`
`IV. Conclusion ..................................................................................................... 49
`
`
`
`
`
`
`
`ii
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`Astron Industrial Associates, Inc. v. Chrysler Motors Corp.,
`405 F.2d 958 (5th Cir. 1968) ........................................................................ 19, 20
`
`Page(s)
`
`Copperweld Corp. v. Independence Tube Corp.,
`467 U.S. 752 (1984) ............................................................................................ 16
`
`Dalton v. Honda Motor Co.,
`425 F. App’x 886 (Fed. Cir. 2011) ..............................................................passim
`
`Doe v. Urohealth Systems, Inc.,
`216 F.3d 157 (1st Cir. 2000) ................................................................... 20, 21, 22
`
`G & T Terminal Packaging Co. v. Consolidated Rail Corp.,
`719 F. Supp. 153 (S.D.N.Y. 1989) ..................................................................... 19
`
`Gambocz v. Yelencsics,
`468 F.2d 837 (3d Cir. 1972) ............................................................................... 19
`
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) .............................................................................. 39
`
`In re Vision Service Plan Tax Litigation,
`No. 2:07-md-1829, 2010 WL 2572076 (S.D. Ohio June 22, 2010) ............. 21, 22
`
`Mars Inc. v. Nippon Conlux Kabushiki-Kaisha,
`58 F.3d 616 (Fed. Cir. 1995) .................................................................. 20, 21, 27
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 39
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .............................................................................................. 7
`
`Universal Oil Products Co. v. Rexall Drug & Chemical Co.,
`463 F.2d 1122 (C.C.P.A. 1972) .......................................................................... 17
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 42
`iii
`
`
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`PATENT AND TRADEMARK OFFICE DECISIONS
`Accord Healthcare, Inc., USA v. Eli Lilly & Co.,
`IPR2013-00356, Paper 13 (PTAB Oct. 1, 2013) .........................................passim
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00348, Paper 14 (PTAB Dec. 13, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00349, Paper 14 (PTAB Dec. 13, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00354, Paper 20 (PTAB Dec. 13, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00393, Paper 17 (PTAB Dec. 18, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00394, Paper 15 (PTAB Dec. 18, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00397, Paper 15 (PTAB Dec. 18, 2013) ....................................... 25, 26
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2013-00398, Paper 16 (PTAB Dec. 18, 2013) ....................................... 25, 26
`
`BioDelivery Sciences International, Inc. v. Monosol RX, LLC,
`IPR2013-00315, Paper 31 (PTAB Nov. 13, 2013) ....................................... 25, 26
`
`In re Guan,
`Reexamination Proceeding, Control No. 95/001,045,
`Decision Vacating Filing Date (Aug. 25, 2008) ................................................. 30
`
`St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp.,
`IPR2013-00258, Paper 29 (PTAB Oct. 16, 2013) ........................................ 25, 26
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00042, Paper 16 (PTAB Feb. 22, 2013) .............................................. 15
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00168, Paper 9 (PTAB Aug. 26, 2013) ................................... 24, 25, 26
`
`
`
`iv
`
`
`
`FEDERAL STATUTES
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`35 U.S.C. § 312 ............................................................................................ 28, 29, 31
`
`35 U.S.C. § 315 .................................................................................................passim
`
`REGULATIONS
`
`37 C.F.R. § 42.8 ................................................................................................passim
`
`37 C.F.R. § 42.104 ....................................................................................... 29, 31, 37
`
`37 C.F.R. § 42.106 ....................................................................................... 29, 31, 37
`
`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
`
`1B James Moore et al., Moore’s Federal Practice ¶ 0.411[1] (2d ed. 1965) ........... 19
`
`154 Cong. Rec. S9982 (daily ed. Sept. 27, 2008) .............................................. 19, 28
`
`157 Cong. Rec. S5402 (daily ed. Sept. 8, 2011) ...................................................... 15
`
`18A Charles Alan Wright, Arthur R. Miller & Edward A. Cooper, Federal
`Practice and Procedure § 4451 (2d ed. 2011) ....................................................... 7
`
`18A Charles Alan Wright, Arthur R. Miller & Edward A. Cooper, Federal
`Practice and Procedure § 4460 (2d ed. 2011) ..................................................... 20
`
`Manual of Patent Examining Procedure § 2258 (8th ed., Rev. 7) (July 2008)........ 39
`
`
`
`v
`
`
`
`I.
`
`Introduction
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`Patent owner Philips Electronics North America Corporation (“Philips”)
`
`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. 5,607,454 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
`
`litigation filed a year before the pending petition was filed. Notably, Philips also
`
`asserted six of the eight patents, including U.S. Patent No. 5,607,454 (the “’454
`
`patent”) at issue in this proceeding, against Zoll Lifecor’s corporate parent more
`
`than three years before the pending petition was filed. Specifically, Philips served
`
`Zoll Medical Corporation (“Zoll Medical”) with a complaint alleging infringement
`
`of the ’454 patent in October of 2010. Zoll Lifecor is a wholly owned subsidiary
`
`of Zoll Medical, and Zoll Medical has stated that it operates the Lifecor business
`
`through its Zoll Lifecor subsidiary. As a result, Zoll Medical both controls and
`
`could have controlled Zoll Lifecor, yet petitioner Zoll Lifecor neither mentions its
`
`
`
`1
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`parent corporation Zoll Medical nor the earlier-filed litigation against Zoll Medical
`
`in the pending petition.
`
`Because of the prior litigation between Philips and Zoll Medical, as well as
`
`Zoll Lifecor’s failure to notify the Board of the litigation and Zoll Medical, inter
`
`partes review should not be instituted. Specifically, the pending petition is time-
`
`barred under 35 U.S.C. § 315(b). Based on Zoll Medical’s corporate relationship
`
`with its wholly owned subsidiary, petitioner Zoll Lifecor, as well as public
`
`documents showing the significant control Zoll Medical exercises over all aspects
`
`of Zoll Lifecor’s business and legal proceedings, Zoll Medical is both a “real party
`
`in interest” as well as a “privy of the petitioner.” In either situation, § 315(b) bars
`
`the pending petition based on Philips’s earlier-filed complaint alleging
`
`infringement of the ’454 patent by Zoll Medical.
`
`Further, Zoll Lifecor’s failure to notify the Board of the related litigation and
`
`its corporate parent Zoll Medical leads to other defects requiring the Board, under
`
`the relevant statutes and regulations, to vacate the current filing date. First, Zoll
`
`Lifecor violated a specific statutory requirement by failing to identify its parent,
`
`Zoll Medical, as an additional “real party in interest” in this proceeding. Second,
`
`by remaining silent on the earlier litigation in which the same patent was asserted
`
`against its parent corporation, Zoll Lifecor violated a requirement that petitioners
`
`identify all “related matters” as a part of the petition. Based on any one of these
`
`
`
`2
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`three defects, Philips requests that the Board not institute the requested inter partes
`
`review.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`A. The Pending Petition Should Be Denied Under 35 U.S.C. § 315(b)
`Based on the One-Year Litigation Bar
`
`Based on the plain language of 35 U.S.C. § 315(b) and prior decisions of the
`
`Board, the pending petition should be denied. Under the statute, “[a]n 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.” 35
`
`U.S.C. § 315(b) (2012) (emphasis added). That provision squarely applies to bar
`
`the pending petition.
`
`Under the statute, Philips’s earlier complaint against Zoll Medical bars the
`
`pending petition if Zoll Medical is either a “real party in interest,” or a “privy of
`
`the petitioner.” Here, Zoll Medical both controls and could have controlled both
`
`the business and legal proceedings of its wholly owned subsidiary Zoll Lifecor.
`
`Indeed, after acquiring Lifecor Inc., Zoll Medical announced that it would “operate
`
`the Lifecor business through its ZOLL Lifecor subsidiary.” Ex. 2001 at 1 (Zoll
`
`Medical Corp., Zoll Medical Completes Acquisition of Business of LifeCor, Inc.,
`
`http://www.zoll.com/news-releases/2006/04-10-06-zoll-acquisition-lifecor/
`
`(last
`
`
`
`3
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`visited Dec. 9, 2013) (“Press Release”)). According to specific guidance provided
`
`by the Patent and Trademark Office, such actual or potential control indicates that
`
`Zoll Medical is both a “privy” of Zoll Lifecor and a “real party in interest” in this
`
`proceeding. Under either alternative, § 315(b) bars the pending petition.
`
`1.
`
`Philips Served a Complaint on Zoll Medical Alleging
`Infringement of the ’454 Patent Three Years Before Zoll
`Lifecor Filed the Pending Petition
`The pending petition seeks inter partes review of a patent asserted by Philips
`
`in two different district court actions: (1) an earlier action alleging infringement by
`
`Zoll Medical based on certain external defibrillator products, known as AED Plus
`
`and AED Pro, and (2) a later action alleging infringement by Zoll Lifecor based on
`
`a wearable defibrillator product, known as LifeVest.
`
`In the first action, which began in 2010, Philips asserted the ’454 patent and
`
`five other related 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)
`
`(“Massachusetts Action Complaint”). Zoll Medical received service of the
`
`amended complaint on October 13, 2010. Ex. 2003 (Amended Complaint,
`
`Koninklijke Philips Elecs. N.V. v. Zoll Med. Corp., Civ. A. No. 1:10-cv-11041 (D.
`
`Mass. Oct. 13, 2010), ECF No. 7) (“Amended Massachusetts Action Complaint”);
`
`
`
`4
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`Ex. 2004 (Affidavit of Process Server, Koninklijke Philips Elecs. N.V. v. Zoll Med.
`
`Corp., Civ. A. No. 1:10-cv-11041 (D. Mass. Oct. 14, 2010), ECF No. 8).
`
`Almost two years after commencing the Massachusetts Action, Philips filed
`
`a second action, this time in the United States District Court for the Western
`
`District of Pennsylvania, alleging infringement of the ’454 patent and seven other
`
`patents by Zoll Lifecor (the “Pennsylvania Action”). Ex. 2005 (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”). The
`
`complaint in the Pennsylvania Action, which was served on September 21, 2012,
`
`identified the LifeVest as the accused product. Id.; Ex. 2006 at 2 (Summons in a
`
`Civil Action, Koninklijke Philips Elecs. N.V. v. Zoll Lifecor Corp., Civ. A. No.
`
`2:12-cv-01369 (W.D. Pa. Sept. 28, 2012), ECF No. 7)).
`
`On September 23, 2013, approximately one year after receiving service of
`
`the complaint in the Pennsylvania Action, Zoll Lifecor filed petitions for inter
`
`partes review of all eight Philips patents asserted in that action, including the ’454
`
`patent. See Petition at 2, 60. Notably, six of the eight patents for which Zoll
`
`Lifecor currently seeks review are the six patents Philips asserted against Zoll
`
`Medical over three years earlier in the Massachusetts Action:
`
`
`
`
`
`5
`
`
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`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
`
`
`
`
`
`
`
`
`
`Inter Partes
`Review
`Requested by
`Zoll Lifecor
`
`
`
`
`
`
`
`
`
`
`
`In all eight petitions, Zoll Lifecor notified the Board about the Pennsylvania
`
`Action but did not mention the Massachusetts Action, despite the significant
`
`overlap in patents involved. See Petition at 2. Further, Zoll Lifecor did not
`
`mention the existence of, or its close relationship to, its corporate parent, Zoll
`
`Medical, despite Zoll Medical’s consistent control over Zoll Lifecor’s business and
`
`legal proceedings.
`
`Zoll Medical Is a Real Party in Interest in this Proceeding
`
`2.
`Zoll Lifecor did not notify the Board regarding its relationship with Zoll
`
`Medical and remained silent regarding the prior related litigation, even though Zoll
`
`Lifecor knew it involved the ’454 patent. In its petition, Zoll Lifecor identified
`
`itself as the only real party in interest. See Petition at 1–2. Prior public statement
`
`
`
`6
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`by both Zoll Medical and Zoll Lifecor, however, show that Zoll Medical is also a
`
`real party in interest in this proceeding.
`
`One common consideration in helping to identify a “real party in interest”
`
`(as well as a “privy of the petitioner”)—as highlighted in the Patent and Trademark
`
`Office’s Patent Trial Practice Guide—is “whether the non-party exercised or could
`
`have exercised control over a party’s participation in a proceeding.” See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (to be
`
`codified at 37 C.F.R. pt. 42) (the “Practice Guide”) (citing Taylor v. Sturgell, 553
`
`U.S. 880, 895 (2008) (noting an exception to the rule against non-party preclusion
`
`if the party “‘assume[d] control’ over the litigation in which that judgment was
`
`rendered”) and 18A Charles Alan Wright, Arthur R. Miller & Edward A. Cooper,
`
`Federal Practice and Procedure § 4451 (2d ed. 2011)); see also Practice Guide, 77
`
`Fed. Reg. at 48,759 (stating that the “‘real party-in-interest’ may be the petitioner
`
`itself, and/or it may be the party or parties at whose behest the petition has been
`
`filed”). Here, Zoll Medical has exercised control over Zoll Lifecor’s business in
`
`general, including its legal proceedings, and also (as will be discussed in relation to
`
`privity) legally could have exercised control over this proceeding.
`
`
`
`7
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`
`Public Documents Show that Parent Zoll Medical
`Controls Its Wholly Owned Subsidiary, Zoll Lifecor
`
`a)
`
`Public documents reflect the close relationship between Zoll Medical and
`
`Zoll Lifecor, and show that corporate parent Zoll Medical has exercised consistent
`
`control over Zoll Lifecor’s business. In its corporate disclosure statement in the
`
`Pennsylvania Action, Zoll Lifecor stated that it is a wholly owned subsidiary of
`
`Zoll Medical. Ex. 2007 at 1 (Zoll Lifecor Corporation’s Disclosure Statement,
`
`Koninklijke Philips Elecs. N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-cv-01369
`
`(W.D. Pa. Nov. 9, 2012), ECF No. 25). In a press release from April of 2006, Zoll
`
`Medical stated that it had recently acquired all the assets of a company called
`
`Lifecor, Inc.—assets totaling over $15 million. Ex. 2001 at 1 (Press Release). The
`
`press release further stated that “ZOLL [Medical] will operate the Lifecor business
`
`through its ZOLL Lifecor subsidiary, based in Pittsburgh, Pennsylvania.” Id.
`
`Likewise, according to its public financial statements filed soon after that
`
`acquisition, Zoll Medical “now manufactures and markets [a] wearable external
`
`defibrillator system [i.e., LifeVest] through its subsidiary, ZOLL Lifecor
`
`Corporation.” Ex. 2008 at 10 (Zoll Medical Corp., Annual Report (Form 10-K)
`
`(Dec. 15, 2006)) (“Zoll Medical 2006 Form 10-K”); see also id. at 62 (discussing
`
`the acquisition and stating that Zoll Medical “now utilizes those assets in its ZOLL
`
`Lifecor subsidiary”), 18 (discussing a manufacturing facility in Pittsburgh, where
`
`
`
`8
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`LifeVest is manufactured), 19 (noting that Zoll Medical has a “dedicated sales
`
`force[]” to sell the LifeVest product). Zoll Medical made clear that it considers the
`
`facility
`
`in Pittsburg (where Zoll Lifecor
`
`is
`
`located) as Zoll Medical’s
`
`“manufacturing facility” for the LiveVest product. Ex. 2009 at 39 (Zoll Medical
`
`Corp., Annual Report (Form 10-K) (Nov. 23, 2011)) (“Zoll Medical 2011 Form
`
`10-K”) (describing Pittsburgh as “where our LifeVest manufacturing facility is
`
`located”) (emphasis added). In fact, Zoll Medical exercised an option to purchase
`
`the Pittsburgh manufacturing facility for $10.8 million rather than continuing to
`
`lease the facility. Id. at 49 (“On October 11, 2011, [Zoll Medical] exercised our
`
`option to purchase the LifeVest facility in Pittsburgh, Pennsylvania for cash in the
`
`amount of $10.8 million.”); id. at 39.
`
`Further, its financial statements show that Zoll Medical took responsibility
`
`for the clinical trials of the LifeVest product. Ex. 2010 at 27 (Zoll Medical Corp.,
`
`Annual Report (Form 10-K) (Dec. 8, 2008)) (“Zoll Medical 2008 Form 10-K”)
`
`(“We are conducting clinical trials related to . . . the LifeVest.”). With these
`
`statements, Zoll Medical has demonstrated its active involvement and control over
`
`the LifeVest product at issue in the related Pennsylvania Action.
`
`Moreover, a review of Zoll Lifecor’s website (www.lifecor.com) shows that
`
`LifeVest is Zoll Lifecor’s only product. Indeed, the website says “Welcome to
`
`Zoll LifeVest.” Ex. 2011 (Zoll LifeVest - Welcome to Zoll LifeVest, Screenshot
`
`
`
`9
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`of Webpage). By controlling the LifeVest product, Zoll Medical does more than
`
`just control the product at issue in the Pennsylvania Action—it controls the only
`
`product of Zoll Lifecor.
`
`Zoll Lifecor’s website further shows that Zoll Medical exercises control over
`
`Zoll Lifecor in all aspects of its operations. For instance, it shows that Zoll
`
`Medical controls hiring at Zoll Lifecor. A link to “Careers” on Zoll Lifecor’s
`
`website leads to a page identifying the Zoll LifeVest product and referring to the
`
`Zoll Pittsburgh facility. Ex. 2012 (Zoll LifeVest - Careers, Screenshot of
`
`Webpage). And clicking on any of the identified options, such as “Search and
`
`Apply for Current Opportunities” or “Embedded Software Engineer” leads the user
`
`away from Zoll Lifecor’s website and onto Zoll Medical’s website. Ex. 2013 (Zoll
`
`Corporate Information - Careers, Screenshot of Webpage); Ex. 2014 (Zoll
`
`Corporate Information - Embedded Software Engineer Posting, Screenshot of
`
`Webpage). As another example of Zoll Medical’s control, the bottom of Zoll
`
`Lifecor’s website indicates copyright ownership by Zoll Medical and also indicates
`
`that Zoll Medical owns the trademark rights for “LifeVest.” Ex. 2011 (Zoll
`
`LifeVest - Welcome to Zoll LifeVest, Screenshot of Webpage).
`
`Also, throughout the Pennsylvania Action, Zoll Lifecor referred to itself and
`
`its parent Zoll Medical as one collective entity, showing the closeness of the
`
`relationship and Zoll Medical’s control over Zoll Lifecor. For example, in an
`
`
`
`10
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`effort to stay the Pennsylvania Action based on the earlier-filed Massachusetts
`
`Action, Zoll Lifecor repeatedly merged itself with Zoll Medical, seeking to show
`
`the alleged prejudice to them together as one collective corporate entity, which
`
`Zoll Lifecor referred to as “ZOLL.” Ex. 2015 at 1 (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”) (stating that Philips has “now sued ZOLL Medical Corporation
`
`or its wholly owned subsidiary ZOLL Lifecor Corporation (collectively, ‘ZOLL’)
`
`in three different venues”) (emphasis added); id. at 10 (asserting that a stay in the
`
`Pennsylvania Action “would reduce the unfair burden to ZOLL of serial lawsuits
`
`without unfairly prejudicing Philips”). Further, Zoll Lifecor credited this
`
`collective entity, “ZOLL,” (rather than Zoll Lifecor or Lifecor, Inc.) with
`
`“introduc[ing] its LifeVest product to the market” in 2001. Id. at 2 (emphasis
`
`added).
`
`Similarly, in a failed attempt to maintain a stay granted by the court in the
`
`Pennsylvania Action, Zoll Lifecor characterized that action as “one battle in a
`
`broader, multi-state patent war that Philips initiated against ZOLL.” Ex. 2016 at 2
`
`(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
`
`
`
`11
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`(W.D. Pa. July 8, 2013), ECF No. 85) (“Pennsylvania Action Brief to Maintain
`
`Stay”).
`
`Through their public statements, Zoll Medical and Zoll Lifecor have shown
`
`that Zoll Medical controls Zoll Lifecor in all ways relevant to this proceeding.
`
`b)
`
`Zoll Medical Controls Zoll Lifecor’s Involvement in
`the Pennsylvania Action and in this Proceeding
`
`In addition to controlling Zoll Lifecor’s business generally, Zoll Medical
`
`also controls its subsidiary’s involvement in the Pennsylvania Action and in this
`
`proceeding. This control has been demonstrated in various ways. First, Zoll
`
`Lifecor admitted in pleadings in the Pennsylvania Action that no officers from Zoll
`
`Lifecor even attended the court-ordered mediation in that case, let alone handled
`
`the negotiations. Instead, Zoll Medical sent three of its own corporate officers: its
`
`President Jonathan Rennert, Vice-President and General Counsel Aaron Grossman,
`
`and Director of Intellectual Property Robert Follett. Ex. 2017 at 6–7, 9 (Zoll’s
`
`Brief in Support of its Motion for Sanctions for Plaintiffs’ Failure to Mediate in
`
`Good Faith, Koninklijke Philips Elecs. N.V. v. Zoll Lifecor Corp., Civ. A. No. 2:12-
`
`cv-01369 (W.D. Pa. May 4, 2013), ECF No. 56) (“Pennsylvania Action Sanctions
`
`Brief”); Ex. 2016 at 1 (Pennsylvania Action Brief to Maintain Stay) (“Despite
`
`ZOLL’s best efforts—it brought its President, General Counsel, Director of
`
`Intellectual Property, and its lead outside litigation counsel—the mediation was
`
`
`
`12
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`unsuccessful.”). Cf. Ex. 2018 (Zoll Medical - Management Team, Screenshot of
`
`Webpage) with Ex. 2019 (Zoll LifeVest - Management, Screenshot of Webpage)
`
`(showing Rennert and Grossman in the management team of Zoll Medical, not Zoll
`
`Lifecor, and showing Robert Follett on neither team). Thus, it was Zoll Medical
`
`controlling potential settlement of the Pennsylvania Action, not Zoll Lifecor.
`
`Second, counsel selected by Zoll Medical for the earlier-filed Massachusetts
`
`Action—Fish & Richardson, P.C.—also serve as counsel to Zoll Lifecor in both
`
`the Pennsylvania Action and in all eight of the pending proceedings, including this
`
`one involving the ’454 patent. Ex. 2017 at 3 (Pennsylvania Action Sanctions
`
`Brief) (admitting that “ZOLL” retained the same law firm in both the Pennsylvania
`
`Action and the Massachusetts Action, among others); Ex. 2020 at 42 (Defendant’s
`
`Answer to Plaintiffs’ Amended Complaint, Koninklijke Philips Elecs. N.V. v. Zoll
`
`Med. Corp., Civ. A. No. 1:10-cv-11041 (D. Mass. July 18, 2011), ECF No. 15)
`
`(listing Fish & Richardson, P.C. as counsel); Petition at 2 (same)).
`
`Third, an expert witness disclosed by Zoll Medical in the Massachusetts
`
`Action—Dr. Wayne C. McDaniel—also serves as an expert in support of the
`
`pending petition. Ex. 2021 (Email from Proshanto Mukherji, Fish & Richardson,
`
`P.C., to Philips-Zoll listserv (June 4, 2012, 2:50 p.m. EDT)) (disclosing Dr.
`
`McDaniel in the Massachusetts Action); Ex. 1003 (Declaration of Wayne C.
`
`McDaniel, Ph.D.).
`
`
`
`13
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`Fourth, Zoll Lifecor asserted that the stay in the Pennsylvania Action should
`
`remain in place because “the parties are busy preparing for trial” in the
`
`Massachusetts Action. See Ex. 2016 at 3 (Pennsylvania Action Brief to Maintain
`
`Stay) (emphasis added); see also id. at 4 (“There simply is no reason, at a time
`
`when the parties are focusing their resources on preparing for the October trial [in
`
`the Massachusetts Action], to ramp up activity in [the Pennsylvania Action].”)
`
`(emphasis added). For that statement to make sense, Zoll Medical must be viewed
`
`as controlling Zoll Lifecor. Otherwise, there could be no prejudice to Zoll Lifecor
`
`in the Pennsylvania Action based on Zoll Medical’s trial preparations in the
`
`Massachusetts Action.
`
`Because Zoll Medical controls both this proceeding and the related
`
`Pennsylvania Action, it should be deemed a real party in interest.
`
`Zoll Medical Is Also a Privy of the Petitioner, Zoll Lifecor
`
`3.
`For at least three independent bases, Zoll Medical should also be deemed a
`
`privy of its wholly owned subsidiary, Zoll Lifecor, barring the pending petition.
`
`See Practice Guide, 77 Fed. Reg. at 48,759; 35 U.S.C. § 315(b).
`
`a)
`
`Zoll Medical Is a Privy Because of Its Relationship to
`the Infringing Product
`
`The concept of privity was discussed during the Senate proceedings related
`
`to the Leahy-Smith America Invents Act. At that time, a “privy” was defined as “a
`
`
`
`14
`
`
`
`Case IPR2013-00618
`Patent Owner’s Preliminary Response
`
`party that has a direct relationship to the petitioner with respect to the allegedly
`
`infringing product.” Ex. 2022 at 31 (157 Cong. Rec. S5402 (daily ed. Sept. 8,
`
`2011) (statement of Mr. Schumer)). Here, the product alleged to infringe in the
`
`Pennsylvania Action is LifeVest. And, as described above, Zoll Medical has a
`
`direct relationship to petitioner Zoll Lifecor with respect to the Lif