Docket No. 2015-1977, -1986, -1987
LOURIE, DYK, HUGHES
October 20, 2016
Brief Summary: Medtronic’s petition for rehearing following the PTAB (“Board”) decision to discontinue IPR denied as barred under 35 USC § 314(d) (IPR decision is “final and nonappealable”).
Summary: Medtronic filed a petition for rehearing following the PTAB (“Board”) decision to discontinue IPR. In GTNX (FC 2015), the FC held that such a decision is not reviewable on appeal under 35 USC § 314(d) (IPR decision is “final and nonappealable”). The question here is whether that is correct in light of Cuozzo (US 2016 (addressing § 314(a) (IPR only if “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”)). Bosch brought suit against Medtronic’s subsidiary Cardiocom, LLC, alleging infringement of US 7,769,605 and 7,870,249, and Cardiocom petitioned for IPR. In January 2014, the Board denied the petitions, finding “Cardiocom failed to show a reasonable likelihood that any of the challenged claims was unpatentable”. Medtronic then filed three IPR petitions listing it as “the sole real party in interest.” Bosch argued the petitions should be denied because Medtronic had not named Cardiocom (§ 312(a)(2)) but IPR proceeded since the Board found Bosch had not established the same. Based on additional discovery, however, the Board agreed with Bosch and vacated the decision and terminated the IPRs. The FC panel explained that it “recently concluded that questions regarding the application and interpretation of ‘statutes ‘closely related’ to the decision whether to institute are necessarily, and at least, those that define the metes and bounds of the [IPR] process” (Husky, FC 2016) and concluded “[i]t is difficult to conceive of a case more ‘closely related’ to a decision to institute proceedings than a reconsideration of that very decision.” It concluded that “[t]he 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)” (Cuozzo; Husky; Wi-Fi One, FC 2016 (application of § 314(d) to the time bar of § 315(b)). The FC panel also concluded that “Medtronic [did] not demonstrate entitlement to mandamus relief” (In re Dominion, FC 2014 (no “‘clear and undisputable’ right to relief in view of the statutory scheme precluding review of non-institution decisions”)). Thus, panel rehearing was not granted.