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           NOTE: This order is nonprecedential.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.
                        ORDER
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 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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  ZOLL LIFECOR CORPORATION   v. PHILIPS ELECTRONICS       3



 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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 4           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.


                                       FOR THE COURT

                                        /s/ Daniel E. O’Toole
                                        Daniel E. O’Toole
                                        Clerk of Court


 s19


 ISSUED AS A MANDATE: August 25, 2014
