Post-Cuozzo, Board Decision Terminating IPR Proceedings Remains Not Appealable

Published October 24, 2016

In Medtronic v Bosch (Oct 20, 2016), a Federal Circuit panel reaffirmed its earlier order dismissing Medtronic’s appeal from a Board decision to terminate IPR proceedings. The Board, after initially instituting inter partes review, had vacated its institution decision and terminated the proceedings on finding that Medtronic failed to satisfy the real-party-in-interest requirements of 35 U.S.C. § 312(a). Pre-Cuozzo, the Federal Circuit then initially dismissed the appeal for lack of jurisdiction under § 314(d).

After its appeal was initially rebuffed, Medtronic requested rehearing based on the Supreme Court’s decision in Cuozzo, arguing inter alia that the Board exceeded its authority by terminating the proceeding after institution on a “non-merits issue.” The Federal Circuit viewed this as a challenge to the Board’s “authority to reconsider its earlier decisions,” and determined that such a challenge must fail because (i) 35 U.S.C. § 318(a) contemplates that proceedings can be dismissed post-institution and (ii) administrative agencies have inherent authority to reconsider their decisions.

The Federal Circuit concluded that, under Cuozzo, § 314(d) bars review not only of a decision whether to institute inter partes review, but also reconsideration of that institution decision. In doing so, the court reiterated Cuozzo’s holding “that § 314(d) operates to bar review in cases where the challenge consists 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.” (quotations omitted). The Court even found the reconsideration here is “fairly characterized as a decision whether to institute proceedings,” perhaps because it hinged on § 312(a), which “defines the metes and bounds of the inter partes review process.”

Medtronic is one of several recent Federal Circuit decisions that clarify § 314(d)’s bar on review of questions “closely related” to the institution decision. Those other cases include Husky (assignor estoppel) and WiFi One (time bar under § 315(b)). In these decisions, the Federal Circuit has maintained strict limits on appeals relating to the PTAB’s decision to institute, or maintain, IPR proceedings. In WiFi One, however, Judge Reyna did invite en banc review of the issue.

The panel consisted of Judges Lourie, Dyk, and Hughes.


Posted on 10/24/2016 by Andrew M. Mason