In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest.
As we have previously discussed, the Supreme Court in Cuozzo determined that under 35 U.S.C. § 314(d), a PTAB decision on institution of an IPR is nonappealable, although such a decision might be appealable if it implicated constitutional questions or raised issues of the agency acting outside its statutory limits.
In Medtronic, the PTAB initially instituted IPRs of two Bosch patents on petitions filed by Medtronic, which listed Medtronic as the sole real party in interest. The PTAB was not persuaded by Bosch’s argument that the petitions should be denied because they failed to name Bosch’s subsidiary, Cardiocom, LLC, as a real party in interest. After institution, the PTAB permitted Bosch to take discovery on this issue, and then granted Medtronic’s motion to dismiss the petitions for failure to name all real parties in interest, as required by 35 U.S.C. § 312(a)(2). By the time the PTAB granted the motion and dismissed the petitions, more than one year had passed since Cardiocom had been sued for infringement, so that Cardiocom was time-barred under 35 U.S.C. § 315(b) from filing new IPR petitions. (Medtronic apparently had filed its petitions in a timely manner under § 315(b), however, the PTAB’s practice of not permitting a petitioner to amend a petition to name an additional real party in interest, without also according a new filing date for the petition, left Medtronic with no way to remedy the problem.)
Medtronic filed a notice of appeal of the Board’s decision terminating the IPRs, and the Federal Circuit dismissed the appeals for lack of jurisdiction, determining that the PTAB’s decision was “final and nonappealable” under 35 U.S.C. § 314(d). Medtronic petitioned for rehearing of this decision and, after the Supreme Court issued its decision in Cuozzo, the court recalled its mandate and requested further briefing on whether Cuozzo affected the court’s decision to dismiss the appeal.
On rehearing, the Federal Circuit noted that in Cuozzo, the Court held 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 determined that reconsideration of a decision to institute proceedings was “closely related” to a decision to institute, and that under Cuozzo there was no jurisdiction for the appeal:
[U]nder 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 Federal Circuit noted that its decision in this case was consistent with its other decisions denying review of PTAB decisions on issues such as assignor estoppel or the time-bar of § 315(b).
One lesson from this case is that motions for discovery may sometimes lead to highly pertinent information, potentially even supporting a dispositive motion. For petitioners, another lesson is that if there is any question that another party may be considered a real party in interest, that party should be named in the petition, in particular if a complaint has been filed starting the clock on the one-year time bar.