The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal. In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit held that just as the PTAB’s initial decision whether to institute inter partes proceedings is not appealable in light of 35 U.S.C. §314(d) and the Supreme Court’s recent Cuozzo decision, neither is a subsequent decision to vacate that institution decision.
Bosch sued Cardiocom (a subsidiary of Medtronic) in 2013 for infringing two Bosch patents. Cardiocom then filed petitions for inter partes reviews of the Bosch patents, which the PTAB denied in January 2014. Medtronic then filed three more petitions seeking inter partes reviews of the same Bosch patents, listing Medtronic as the sole real party in interest. The PTAB instituted the proceedings but allowed Bosch discovery regarding Cardiocom’s status as a real party in interest. Based on the discovery, the PTAB granted Bosch’s motion to terminate the proceedings because Medtronic failed to name Cardiocom as a real party in interest as required by 35 U.S.C. §312(a)(2).
Medtronic appealed to the Federal Circuit, but Bosch moved to dismiss the appeal for lack of jurisdiction, asserting that the Board’s decisions were not appealable under §314(d), which states that a decision to institute inter partes review is “final and nonappealable.” The Federal Circuit granted the motion to dismiss, after which the Supreme Court issued its Cuozzo opinion confirming that PTAB institution decisions are “final and unappealable.” The Federal Circuit then asked Bosch and Medtronic to submit additional briefings in light of Cuozzo.
The Federal Circuit reaffirmed its earlier dismissal, stating “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).” In its analysis, the Federal Circuit stated that in Cuozzo the Supreme Court held that §314(d) operates to bar review in cases where the challenge consists of questions that are closely tied or related to the application and interpretation of the statutes related to the PTAB’s decision to institute.
Applying this precedent, the Federal Circuit reasoned that a reconsideration of an institution decision is “closely related” to a decision to institute, especially when the PTAB reconsideration was predicated on a failure to meet the statutory requirement (here, to name all real parties in interest) for filing a petition in the first place.
The Federal Circuit further explained that the statutes contemplate that appeals are generally limited to a “decision with respect to … patentability” and here there was no such decision. Accordingly, the Federal Circuit concluded that under Cuozzo a decision whether to institute and a reconsideration of that decision are both barred from review under §314(d).
The Federal Circuit’s Medtronic v. Bosch decision illustrates the limited scope of inter partes review issues that the Federal Circuit will currently consider and further emphasizes the importance of prevailing at the institution stage.