Discussion Board

PTAB Decision To Terminate IPR Proceedings After Institution Is Not Appealable

Team Contact: Marc Lorelli

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977 (Fed. Cir. Oct. 20, 2016)

Applying the Supreme Court’s interpretation of the AIA’s provision making inter partes review institution decisions “final and nonappealable,” 35 U.S.C. § 314(d), the U.S. Court of Appeals for the Federal Circuit held that a Patent Trial and Appeal Board decision to terminate an IPR after institution due to a petitioner’s failure to identify the real party-in-interest cannot be challenged on appeal.

The petitioner, Medtronic, Inc., filed three petitions for IPR challenging claims in two patents owned by Robert Bosch Healthcare Systems, Inc. After institution, the PTAB granted discovery to explore the relationship between Medtronic and a subsidiary that Bosch had sued for infringing the patents. The subsidiary also had filed a previous petition for IPR on the Bosch patents, which was denied. Based on the discovery, Bosch moved to dismiss the IPR on the grounds that the subsidiary was a real party-in-interest, and Medtronic failed to name it in the petition. See 35 U.S.C. § 312(a)(2). The PTAB granted the motion and terminated the proceedings.

Medtronic appealed the termination to the Federal Circuit. First, the appeals court dismissed the appeal for lack of jurisdiction. Then, following the Supreme Court’s ruling in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), reviewing appealability of institution decisions, the appeals court recalled the mandate and requested additional briefing.

In an October 20, 2016 decision, the Federal Circuit reaffirmed its decision and dismissed Medtronic’s appeal. The court rejected Medtronic’s argument that Cuozzo permitted it to appeal the PTAB’s decision to terminate the IPR. In Cuozzo, the Supreme Court held that § 314(d) bars “mine run” challenges based on “questions that are closely tied” or “closely related” to “the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review[.]” 136 S. Ct. at 2141-42. The appeals court held that Medtronic’s appeal was indeed “closely related” to the institution decision, rather than based on due process or other constitutional issues, or application of other statutes:

It is difficult to conceive of a case more “closely related” to a decision to institute proceedings than a reconsideration of that very decision. It would be strange to hold that a decision to institute review would not be reviewable but a reconsideration of that decision would be reviewable. This is especially so when, as here, the Board’s reconsideration was predicated on a failure to meet the statutory requirements for filing a petition under § 312(a), a provision that defines the metes and bounds of the inter partes review process. The Board’s reconsideration in this case is fairly characterized as a decision whether to institute proceedings, the review of which is barred by § 314(d).

Slip op. at 5 (quotation and citation omitted). The court noted that this result was consistent with recent cases applying Cuozzo and generally declining to review PTAB institution decisions. See, e.g., Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., No. 15-1726 (Fed. Cir. Sept. 23, 2016); Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944 (Fed. Cir. Sept. 16, 2016). The court rejected Medtronic’s argument that the appeal raised constitutional issues, since the PTAB’s authority to decide whether to institute review proceedings included an “inherent authority” to reconsider those decisions without implicating due process concerns.