# United States **Court of Appeals**  **for the Federal Circuit**

______________________

MEDTRONIC, INC., Appellant

v.

ROBERT BOSCH HEALTHC ARE SYSTEMS, INC., Appellee

______________________

2015

- 1977, 2015

- 1986, 2015

- 1987

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board in No s

. IPR2014

- 00488, IPR2014

- 00607, IPR2014

- 00691.

______________________
ON PETITION FOR REHEARING

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Decided: October 20 , 2016

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G REGORY H. L ANTIER , Wilmer Cutler Pickering Hale and Dorr LLP

, Washington, DC, for appellant. Also represented by J OSHUA M. K OPPEL ; M ARK C HRISTOPHER F LEMING , Boston, MA ; D ANIEL W. M C D ONALD , Merchant & Gould P.C., Minneapolis, MN.

M ARK S. D AVIES , Orrick, Herrington & Sutcliffe LLP

, Washington, DC, for appellee. Also represented byMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 2

D ONALD E. D AYBELL , Irvine, CA; B AS D E B LANK , Menlo Park, CA; R ACHEL W AINER A PTER , New York, NY.

______________________

Before L OURIE , D YK , and H UGHES , Circuit Judges.

D YK , Circuit Judge

. Medtronic, Inc. (“Medtronic”) has filed a petition for rehearing

. Robert Bosch Healthcare Systems, Inc. (“Bosch”) opposes.
The original panel decision, following our decision in GTNX, Inc. v. INTTRA, Inc. , 789 F.3d 1309 (Fed. Cir. 2015), held that a determination by the Patent Trial and Appeal Board (“Board”) to discontinue inter partes review proceedings was not reviewable on appeal under 35 U.S.C. § 3 14(d). The question is whether that decision is correct in light of the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee , 136 S. Ct. 2131 (2016)

, which issued after our panel decision.

We now reaffirm our earlier order. The Board’s vac at ur of its institution decisions and termination of the proceedings constitute decision s whether to institute inter partes review and are therefore “final and nonappealable” under § 314(d). Nothing in Cuozzo is to the contrary

. I
In 2013, Bosch brought suit in the United States Di strict Court for the Eastern District of Texas against Cardiocom, LLC (“Cardiocom”)

, a subsidiary of Medtronic, alleging infringement of two patents owned by Bosch (U.S. Patent Nos. 7,769,605 and 7,870,249). Cardiocom then peti tioned for inter partes review of those two p atents . These petitions were denied in January 2014 because Cardiocom failed to show a reasonable likelihood that any of the challenged claims was unpatentable on the grounds asserted

. Medtronic then filed thr ee petitions seeking inter partes review of the same two patents andMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 3

listed Medtronic as the sole real party in interest. Bosch argued that the petitions should be denied because Me dtronic had failed to name Cardiocom as a real party in interest as required by 35 U.S.C. § 312(a)(2) . T he Board institute d inter partes review proceedings

, holding that Bosch had not established that Cardiocom was a real party in interest.

Thereafter the Board granted

- in

- part Bosch ’s motion s seeking additional discovery regarding Cardiocom’s status as a real party in interest. Based on that discovery, Bosch moved to terminate the proceedings because Medtronic had failed to name all real parties in interest. 1 T he Board granted Bosch’s motions, “persuaded [ by the collective evidence ] that Medtronic [was] acting as a proxy for Cardiocom,” J.A. 35, including evidence that Cardiocom was the defendant in district court infringement suits concerning the two patents, that Cardiocom had previou sly filed its own petitions for inter partes review

, that Cardiocom’s senior executives communicated with Me dtronic while Medtronic’s petitions were being prepared, and that Cardiocom paid a portion of the fees for prepa ring Medtronic’s petitions

. The Board vacated the instit ution decisions and terminated the proceedings because of Medtronic ’s failure to comply with the requirement that all real part ies in interest be disclosed

. Medtronic appeal ed

. Bosch moved to dismiss for lack of jurisdiction asserting that the Board’s decisions were not appealable under § 314(d)

. On November 17, 2015,

we dismiss ed Medtronic’s appeal s for lack of jurisdiction and den ied mandamus relief in a non

- precedential order. The mandate issued that same day. Medtronic then petitioned for rehearing. O n June 30, 2016 , w e recalled the mandate , following the Supreme Court’s Cuozzo

1 If Cardiocom were a real party in interest, the p etition would be time

- barred under 35 U.S.C. § 315(b).MEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 4

decision . We requested simultaneous supplemental briefing to “address the question of what action this court should take on the issue of appea lability in view of the Supreme Court’s decision in Cuozzo .” Order Requesting Suppl. Briefing 1–2 , ECF No. 50. The parties filed su pplemental briefs on July 29, 2016.

II

A decision whether to institute inter partes review is “final and nonappealable” under 35 U.S.C. § 314(d). The Supreme Court addressed the scope of § 314(d) in Cuozzo

. Specifically, the Cou rt considered whether § 314(d) “bar [s] a court from considering whe ther the Patent Office wron gly determined

. . . to institute an inter partes re view when it did so on grounds not specifically mentioned in a third party’ s review request .” 136 S. Ct. at 2136 (internal quotations and citations omitted). The re , the patentee argued that the petition had only “implicitly” challenged two claims for which the Board instituted inter partes review proceedings

, id. at 2139, and the petition failed to comply with the requirement of 35 U.S.C. § 312(a)(3) that it “identif[y] , in writing and with particularity, eac h claim challenged

. . . . ” S ee 136 S. Ct. at 2139. While recogni zing the “strong presumption” favoring judicial review on questions of statutory interpretation, id. at 2140, 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,” i d. at 2141

– 42.

We conclude tha t 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)

. Interpreting the “closely related” language in Cuozzo

, we recently concluded that questions regarding the application and interpretation of “statutesMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 5

‘closely related’ to the decision whether to institute are necessarily, and at least, those that define the metes and bounds of the inter partes review process.” Husky Inje ction Molding Sys. Ltd. v. Athena Automation Ltd. , No. 15

- 1726, 2016 WL 5335500, at *6 (Fed. Cir . Sep t

. 23 , 2016 ). It is difficult to conceive of a case more “closely related” to a decision to institute proceedings than a reconsideration of that very decision. I t would be strange to hold that a decision to institute review would not be reviewable but a reconsideration of th at decision would be reviewable

. This is especially so when, as he re, the Board’s reconsi deration was predicated on a failure to meet the statutory requirement s for filing a petition under § 312(a) , a prov ision that “define[s] the metes and bounds of the inter partes review process.” Husky

, 2016 WL 5335500, at *6

. The Board’s reconsideration in this case is fairly chara cterized as a decision whether to institute proceedings, the review of which is barred by § 314(d).

This conclusion is supported by our own cases after Cuozzo

, holding § 314(d) to bar review of question s “clos ely related” to the institution deci sion such as assignor estoppel or the time

- bar of § 315(b). See Husky

, 2016 WL 5335500, at *6 ; Wi

- Fi One, LLC v. Broadcom Corp.

, No. 15

- 1944
, 2016 WL 4933298, at *4 ( Fed. Cir. Sept

. 16
, 2016 ).
For instance, in Wi

- Fi One

, we recently considered the application of § 314(d) to the time

- bar of § 315(b) in light of the Cuozzo decision. Th ere , the patentee asserted that the party seeking inter partes review was barred “because it was in privity with a time

- barred district court lit igant.” Wi

- Fi One

, 2016 WL 4933298, at *2

. It argued that Cuozzo implicitly overruled our prior decision in Achates holding that § 314(d) barred review

. Id. at *3 ; see Achates Reference Publ’g, Inc. v. Apple Inc. , 803 F.3d 652 (Fed. Cir. 2015). We rejected the same argument
, now advanced by Medtronic

, that the “un der this section” language of § 314(d) limits the bar on reviewability onlyMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 6

to questions arising under § 314. Wi

- Fi One , 2016 WL 4933298, at *3–4

. Rather, we concluded that “[n]othing in Cuozzo casts doubt on that interpretation of the statute, especially in light of the fact that the Supreme Court held that the particularity requirement, which is c ontained in section 312, is non appe a lable.” Id. at *4

. Finally, the statute contemplates how appeals from final decisions will generally be limited to a “decision with respect to

. . . patentability.” 35 U.S.C. § 318(a)

. There was no such decision here. See GTNX

, 789 F.3d at 1311.

III
Medtronic argues that Cuozzo reserved the question of § 314(d)’s effect on “ appeals that implicate constit utional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘ th is section.’” 136 S. Ct. at 2141. Thus, § 314(d) would not categorically bar review of a due process challenge based on insufficient notice that affects an entire proceeding. Id. Similarly, it would not “ enable the agency to act outside its statutory l imits by, for example, canceling a patent claim for ‘ indefiniteness under § 112’ in inter partes review. ” Id. at 2141

– 42. Medtronic asserts that its particular challenge is r eviewable because the Board “exceeded its [statutory] authority when it terminate d Medtronic’s petitions after institution on a non

- merits issue

. . . . ” Medtronic Suppl. Br. 18. In other words, Medtronic argues that the Board lacked authority to reconsider its earlier decisions. But § 318(a) contemplates that a proceeding can be “d i smissed” after it is instituted

, and

, as our prior cases have held, “administrative agencies possess inherent authority to reconsider their decisions, subject to certain limit ations, regardless of whether they possess explicit statut ory authority to do so .” Tokyo Kikai Seisakusho, Ltd. v. United States , 529 F.3d 1352, 1360 (Fed. Cir. 2008) . InMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 7

GTNX we considered the application of this principle to the Patent Office. There the Board similarly vacated its initial institution decisions because a prior civil action barred the party from seeking review under 35 U.S.C. § 325(a)(1). 789 F.3d at 1311. W e held that the Board has inherent authority to reconsider its decision s , noting that “ nothing in the statute or regulations applicable here

. . . clearly deprives the Board of that default authority. ” Id. at 1313. We also explained that “[i]t is straine d to describe this as anything but a ‘determination .

. . whet her to institute’ proceedings

— statutory language that is not limited to an initial determination to the exclusion of a determination on reconsideration” and that such a decision is “final and no nappealable.” Id. at 1312 (cit ations omitted ) . The Board did not exceed its authority in reconsidering its institution decision s. 2

2 Medtronic also argues that the Board “does not treat a termination decision as a ‘reconsider[ation]’ of the determination whether to institute.” Medtronic Suppl. Br. 12 (alteratio n in original). Specifically, Medtronic cites to Corning Optical Commc ’ ns RF, LLC v. PPC Broadband, Inc. , IPR2014

- 00440 , Paper 68 (P .T.A.B. Aug. 18, 2015). Similar to the case here, in Corning the Board vacated its institution decision and terminated pro ceedings on a motion to dismiss by the patent owner because of the petitioner’s failure to list all real parties in interest. Id. at 4. In a request for rehearing, the petitioner argued that the Board had erred by applying a “preponderance of the evidence” standard as opposed to an “abuse of discr etion” standard as required by 37 C.F.R. § 42.71(c) for reviewing requests for rehearing

. C orning Optical Comm c’ ns RF, LLC v. PPC Broadband, Inc. , IPR2014

- 00440, Paper 70 at 6 (P .T.A.B. Dec. 9, 2015). On rehea ring the Board rejected this argument because the decision to terminate proceedings was predicated on a motion toMEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 8

Medtronic also argues that this case involves a const itutional issue because the Board “deprived Medtronic of due process” given its inconsistent application of the rea l party in interest requirement. Medtronic Suppl. Br. 19. But there is no colorable constitutional issue.
In sum, as we previously held in GTNX , § 314(d) o perates to bar review of the Board’s reconsideration o f its decision to institute inter partes review proceedings.

IV
In the alternative, Medtronic requests that we treat this appeal as a petition for a writ of mandamus. But Medtronic has not demonstrated entitlement to mand amus relief.

In In re Dominion Dealer Solutions, LLC , 749 F.3d 1379 (Fed. Cir. 2014), which also involved a requested inter partes review, we denied mandamus based on the absence of a “clear and indisputable” right to relief in view of the statutory scheme precluding review of non

insti tution decisions. Id. at 1381 (citation and internal quotation marks omitted). Given that the same statutory provisions preclude Medtronic from appealing the Board’s decision, here too it cannot be said that Medtronic has a clear and indisputable right t o have this court hear its challenges to the Board’s decision.

dismiss filed by the pa tent owner, not a request for r ehearing of the institution decision as of right pursuant to 37 C.F.R. § 42.71(d). Corning

, Paper 70 at 6. T he Board held that the “preponderance of the evidence” standard was appropriate given the requirements for motions under 37 C.F.R. § § 42.20(a), (c), 42.1(d)

. Corning , Paper 70 at 6

– 7. Corning does not hold that requests to dismiss pending proceedings are not requests for reconsideration. It merely holds that such requests do not fall within 37 C.F.R. § 42.71(d)

. Se e GTNX

, 789 F.3d at 1312

– 13.MEDTRONIC , INC

. v. ROBERT BOSCH HEALTHC ARE 9

Panel rehearing is not granted in this case.