Federal Circuit court says it cant review PTAB Reconsideration of IPR Institutions
On October 20, 2016 federal court in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. addressed the effect of the supreme court decision in Cuozzo Speed, on the issue of whether termination of instituted inter partes review (“IPR”) proceedings based on a failure to meet the statutory filing requirements for a petition would be barred from review by 35 U.S.C. § 314(d) [under Cuozzo the court was barred from reviewing the PTAB’s decision on whether to institute inter party review are not]. The court concluded that Cuozzo did not disturb Federal Circuit precedent as to the § 314(d) bar on review for reconsiderations of institution decisions.
The decision comes after the Medtronic challenged Bosch’s patient monitoring patents in three petitions under AIA inter party review in 2014. The PTAB instituted review but later terminated as Medtronic failed to meet the on the issue of whether termination of instituted inter partes review (“IPR”) proceedings based on a failure to meet the statutory filing requirements for a petition (namely, to identify all real parties-in-interest)
The Federal court in this recent decision 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 the here) are both barred from review by § 314(d).
Background
Bosch sued Medtronic subsidiary Cardiocom, LLC for infringing two Bosch patents. Cardiocom filed IPR Petitions on those patents, which were denied for failure to show a reasonable likelihood that the challenged claims were unpatentable. Then, weeks before Cardiocom’s § 315(b) one-year time-bar expired, Medtronic filed three IPR Petitions on the same two patents, naming itself the sole real party-in-interest. Bosch’s Preliminary Response challenged institution on the basis that Cardiocom should have been named as a real party-in-interest under § 312(a), but the Patent Trial and Appeal Board (the “Board”) instituted review. Bosch then moved for and was granted additional discovery into Cardiocom’s status as a real party-in-interest, which revealed evidence that persuaded the Board that Medtronic was acting as a proxy for Cardiocom. Accordingly, the Board vacated the institution decisions and terminated the proceedings.
On appeal, the original panel followed Federal Circuit precedent which held that a determination to discontinue the IPR proceedings was not reviewable on appeal under § 314(d).
Medtronic petitioned for rehearing and the Federal Circuit requested supplemental briefing in view of the Supreme Court’s holding in Cuozzo.
In denying Medtronic’s petition for rehearing, the Court finds review precluded by § 314(d) of the statute. Citing the Cuozzo opinion’s language that “§ 314(d) operates to bar review in cases where the challenge “consist[s] of 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.
The court supported its conclusion in present case cited two post cuozzo cases [ Husky, 2016 WL 5335500, at *6; Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 WL 4933298, at *4 (Fed. Cir. Sept. 16, 2016] which held that § 314(d) barred review of questions “closely related” to the institution decision, such as assignor estoppel or the time-bar of § 315(b)
Thus, it appears that the Federal Circuit post-Cuozzo considers statutes related to IPR filing procedures and requirements to be “closely related” to the decision to institute will not be reviewable on appeal.
Full opinion Click here
