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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Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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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.