A federal appeals court last week declined to overturn a U.S Patent & Trademark Office decision not to review a patent in the long-standing row over fractional flow reserve technology between St. Jude Medical (NYSE:STJ) and Volcano (NSDQ:VOLC).
The medical device rivals have been battling since 2010 over their respective FFR offerings, trading accusations of patent infringement.
St. Jude 1st sued Volcano, alleging infringement of 5 patents cover various aspects of the FFR technology. Volcano filed a counter-claim in September 2010, alleging infringement of 1 of its own patents for a "Multipurpose host system for invasive cardiovascular diagnostic measurement acquisition and display," or the "‘994 patent." But the parties agreed to dismiss all claims regarding the ‘994 patent in October 2012; St. Jude asked for an inter partes review about 6 months later, according to court documents.
Last October the patent bureau’s Patent Trial & Appeal Board denied St. Jude’s request, on the grounds that it was applied for after the 1-year deadline following a complaint of infringement.
"The [patent board] explained that a counterclaim alleging infringement constitutes a ‘complaint alleging infringement of the patent’ within the meaning of section 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than 1 year before filing the petition," according to the documents.
The U.S. Court of Appeals for the Federal Circuit upheld the patent board in an April 24 ruling, citing a lack of jurisdiction and the patent board’s own rules barring appeals of its decisions on inter partes review.
"We hold that we may not hear St. Jude’s appeal from the director’s denial of the petition for inter partes review," according to the documents. "Under the title, ‘No Appeal,’ [the patent board’s rule] declares that ‘[t]he determination by the director whether to institute an inter partes review under this section shall be final and nonappealable.’ That declaration may well preclude all review by any route, which we need not decide. It certainly bars an appeal of the non-institution decision here."