In an opinion addressing whether a decision by the Patent Trial and Appeal Board (PTAB or Board) to reconsider a decision on institution is “final and nonappealable,” the US Court of Appeals for the Federal Circuit reaffirmed its original panel decision holding that a determination by the PTAB to discontinue inter partes review (IPR) is not reviewable on appeal. Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case Nos. 15-1977; -1986; -1987 (Fed. Cir., Oct. 20, 2016) (Dyk, J).
Bosch sued Cardiocom, a division of Medtronic, in district court, alleging infringement of two patents owned by Bosch. Cardiocom petitioned for IPR of those two patents, but the petitions were denied. Medtronic then filed three petitions seeking IPR of the two patents, listing Medtronic as the sole real party in interest. After the PTAB instituted IPR proceedings, Bosch moved to terminate the proceedings, alleging that Medtronic had failed to name all real parties in interest. The PTAB granted Bosch’s motions, vacated the institution decisions and terminated the proceedings. Medtronic appealed.
Bosch moved to dismiss the appeal for lack of jurisdiction, asserting that the PTAB’s decisions were not appealable under 35 USC § 314(d). The Federal Circuit dismissed the appeal and denied Medtronic’s mandamus relief. Medtronic then petitioned for rehearing, and, following the Supreme Court of the United States’ decision in Cuozzo Speed Technologies v. Lee (IP Update, Vol. 19, No. 7), the Federal Circuit recalled the mandate and requested supplemental briefing addressing the issue of appealability in view of Cuozzo.
The Federal Circuit concluded that the PTAB’s decision to reconsider institution of IPR is, like the original institution decision, “final and nonappealable” under § 314(d). As the Supreme Court explained in Cuozzo, § 314(d) operates to bar questions “closely related” to the application and interpretation of statutes related to the US Patent and Trademark Office’s decision to institute IPR. A reconsideration of the decision to institute proceedings is “closely related” to the original decision, especially when the PTAB’s reconsideration is predicated on a failure to meet the statutory requirements for institution. Medtronic argued that Cuozzo did not bar review here because the PTAB exceeded its statutory authority when it terminated the proceedings on a non-merits issue. The Federal Circuit disagreed, finding that administrative agencies possess inherent authority to reconsider their decisions.