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ARTICLE · 03 DECEMBER 2013

One-Year Time Limit For IPR’s Includes Counterclaims

McDermott Will & Emery
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The Patent Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (PTO) denied a petition for inter partes review (IPR) that was filed more than one year after a counterclaim alleging infringement was served on the petitioner, finding that the phrase "complaint alleging infringement of the patent," as used in 35 U.S.C. § 315(b), is sufficiently broad to include a counterclaim that alleges infringement of the patent.

United StatesIntellectual Property
Charles Hawkins
Charles Hawkins
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St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp.

The Patent Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office (PTO) denied a petition for inter partes review (IPR) that was filed more than one year after a counterclaim alleging infringement was served on the petitioner, finding that the phrase "complaint alleging infringement of the patent," as used in 35 U.S.C. § 315(b), is sufficiently broad to include a counterclaim that alleges infringement of the patent.  St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 29 (PTAB, Oct. 16, 2013) (Kamholz, A.P.J.).

Petitioner St. Jude sued Volcano in federal district court alleging infringement by Volcano of St. Jude's patents.  In response, Volcano filed and served a counterclaim alleging infringement its patent.  Subsequently, the parties stipulated to the dismissal with prejudice of all claims relating to Volcano's patent. 

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