On Petition for Rehearing, the Federal Circuit held that a decision by the Patent Trial and Appeal Board (“Board”) to discontinue an inter partes review proceeding is not reviewable on appeal under 35 U.S.C. § 314(d).

Medtronic filed three inter partes review petitions covering two patents against Bosch Healthcare Systems, Inc. (“Bosch”). Bosch moved to dismiss the petitions, alleging Medtronic failed to name its subsidiary, Cardiocom, as a real party in interest under 35 U.S.C. § 312(a)(2). Bosch was contemporaneously suing Cardiocom and asserting the same two patents specified in Medtronic’s petitions. The Board instituted the inter partes review proceedings, holding that Bosch had failed to prove that Cardiocom was a real party in interest. After institution, Bosch sought additional discovery to establish the relationship between Medtronic and Cardiocom. On the basis of the newly discovered evidence, the Board vacated the institution decision and terminated the proceedings because Medtronic had failed to disclose all parties in interest, and, thus, ran afoul of § 312(a)(2).

Medtronic appealed the Board’s decision to vacate institution, which the Federal Circuit dismissed for lack of jurisdiction on November 17, 2015. Following the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), Medtronic requested rehearing.

On rehearing, the Federal Circuit 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 here) are both barred from review by § 314(d).” The CAFC also relied on its own precedent to reason that the judiciary is barred from reviewing questions “closely related” to the institution decision. Two 2016 decisions from the Federal Circuit barred review on the questions of (1) assignor estoppel (Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., No. 15-1726, 2016 WL 5335500 (Fed. Cir. Sept. 23, 2016)) and (2) the time-bar of § 315(b) (Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 WL 4933298 (Fed. Cir. Sept. 16, 2016))—both of which the Federal Circuit found to be “closely related” to the institution decision.