Section 314(d) Bars Appellate Review of PTAB’s Reconsideration of Decision to Institute

Federal CircuitMedtronic, Inc. v. Robert Bosch Healthcare (Before Lourie, Dyk, and Hughes, J.) (Opinion for the court, Dyk, J.)

In 2013, Cardiocom, LLC (“Cardiocom”), a subsidiary of Medtronic, Inc. (“Medtronic”), sought inter partes review of two patents owned by Robert Bosch Healthcare Systems, Inc. (“Bosch”). The Cardiocom petitions were denied in January 2014. Medtronic later sought another inter partes review of the same two patents, without naming Cardicom as an interested party.

The Board instituted proceedings on Medtronic’s petitions but allowed additional discovery regarding Cardiocom. Following this discovery, the Board reconsidered its decision to institute and was persuaded that Medtronic was acting as a proxy for Cardiocom. The Board vacated and terminated the proceedings because Medtronic had failed to disclose all real parties in interest as required by 35 U.S.C. §312(a)(2). Medtronic appealed. The Federal Circuit analyzed whether the Court had jurisdiction to review the Board’s decision in light of 35 U.S.C. §314(d).

In November 2015, the Court dismissed Medtronic’s appeals for lack of jurisdiction and denied mandamus relief. Medtronic petitioned for rehearing. In June 2016, the Court recalled the mandate, following the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016). The Court sought to address the appropriate action to take “on the issue of appealability in view of the Supreme Court’s decision in Cuozzo.”

The Court concluded that, under Cuozzo, a decision whether to institute inter partes review proceedings pursuant to §314(a) (the issue in Cuozzo) and a reconsideration of that decision (the situation here) are both barred from review by §314(d). The Court also concluded, interpreting the “closely related” language in Cuozzo, that it would be difficult to conceive of a case more “closely related” to a decision to institute proceedings than a reconsideration of that decision. The Court held that its review of the Board’s reconsideration was barred by §314(d).

The Court considered Medtronic’s arguments that Cuozzo reserved the question of §314(d)’s effect on appeals that implicate constitutional questions and that the Board exceeded its statutory authority by terminating petitions after institution on a non-merits issue. The Court held that the Board did not exceed its inherent authority in reconsidering its institution decisions. Finally, the Court held that there were no colorable constitutional issues raised. Accordingly, the Court did not grant a panel rehearing.

Section 314(d) bars review of questions regarding the application and interpretation of statutes “closely related” to the decision whether to institute an IPR, including reconsideration of the Board’s decision to institute.

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Discuss this

There are currently 2 Comments comments.

  1. Lost In Norway October 31, 2016 3:10 am

    They sure are working hard to insure that nobody can challenge Board’s decision to institute an IPR.

  2. Anon October 31, 2016 6:12 am

    Lost in Norway,

    Actually quite the opposite, since the words of Congress do all the heavy lifting.