United States Court of Appeals 

for the Federal Circuit ______________________ 

MEDTRONIC, INC.,

Appellant

v.

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.,

Appellee

______________________ 

2015-1977, 2015-1986, 2015-1987

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2014-00488, IPR2014-00607, IPR2014-00691.

______________________ 

ON PETITION FOR REHEARING 

______________________ 

Decided: October 20, 2016

______________________ 

GREGORY H. LANTIER, Wilmer Cutler Pickering Hale 

and Dorr LLP, Washington, DC, for appellant. Also 

represented by JOSHUA M. KOPPEL; MARK CHRISTOPHER 

FLEMING, Boston, MA; DANIEL W. MCDONALD, Merchant 

& Gould P.C., Minneapolis, MN.

MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, for appellee. Also represented by 
2 MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE

DONALD E. DAYBELL, Irvine, CA; BAS DE BLANK, Menlo 

Park, CA; RACHEL WAINER APTER, New York, NY.

______________________ 

Before LOURIE, DYK, and HUGHES, Circuit Judges. 

DYK, 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. § 314(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 vacatur of its institution decisions and termination of the 

proceedings constitute decisions 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 District 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 petitioned for inter partes review of those two patents. 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 three petitions 

seeking inter partes review of the same two patents and 
MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE 3

listed Medtronic as the sole real party in interest. Bosch 

argued that the petitions should be denied because Medtronic had failed to name Cardiocom as a real party in

interest as required by 35 U.S.C. § 312(a)(2). The Board 

instituted 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 motions 

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 The 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 previously filed its own petitions for inter partes review, that 

Cardiocom’s senior executives communicated with Medtronic while Medtronic’s petitions were being prepared, 

and that Cardiocom paid a portion of the fees for preparing Medtronic’s petitions. The Board vacated the institution decisions and terminated the proceedings because of 

Medtronic’s failure to comply with the requirement that 

all real parties in interest be disclosed. 

Medtronic appealed. 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 dismissed Medtronic’s appeals for lack of jurisdiction 

and denied mandamus relief in a non-precedential order. 

The mandate issued that same day. Medtronic then 

petitioned for rehearing. On June 30, 2016, we recalled

the mandate, following the Supreme Court’s Cuozzo 

 

1 If Cardiocom were a real party in interest, the petition would be time-barred under 35 U.S.C. § 315(b).
4 MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE

decision. We requested simultaneous supplemental 

briefing to “address the question of what action this court 

should take on the issue of appealability in view of the 

Supreme Court’s decision in Cuozzo.” Order Requesting 

Suppl. Briefing 1–2, ECF No. 50. The parties filed supplemental 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 Court considered whether § 314(d) “bar[s]

a court from considering whether the Patent Office wrongly determined . . . to institute an inter partes review 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). There, 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, each claim 

challenged . . . .” See 136 S. Ct. at 2139. While recognizing 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,” id. at 2141–42.

We conclude 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). Interpreting the “closely related” 

language in Cuozzo, we recently concluded that questions 

regarding the application and interpretation of “statutes 
MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE 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 Injection Molding Sys. Ltd. v. Athena Automation Ltd., No. 15-

1726, 2016 WL 5335500, at *6 (Fed. Cir. Sept. 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. It would be strange to hold that a 

decision to institute review would not be reviewable but a 

reconsideration of that decision would be reviewable. 

This is especially so when, as here, the Board’s reconsideration was predicated on a failure to meet the statutory 

requirements for filing a petition under § 312(a), a provision 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 characterized 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 questions “closely related” to the institution decision 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. There, the patentee asserted that 

the party seeking inter partes review was barred “because 

it was in privity with a time-barred district court litigant.” 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 “under this section” 

language of § 314(d) limits the bar on reviewability only 
6 MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE

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 contained in 

section 312, is nonappealable.” 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 constitutional 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 ‘this 

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 limits 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 reviewable because the Board “exceeded its [statutory] 

authority when it terminated 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 “dismissed” after it is instituted, and, as our prior cases have 

held, “administrative agencies possess inherent authority 

to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.” Tokyo Kikai Seisakusho, Ltd. v. 

United States, 529 F.3d 1352, 1360 (Fed. Cir. 2008). In 
MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE 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. We held that the Board 

has inherent authority to reconsider its decisions, 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 strained to 

describe this as anything but a ‘determination . . . whether 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 nonappealable.” Id. at 1312 (citations omitted). The Board did not exceed its authority in 

reconsidering its institution decisions.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 (alteration 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 proceedings 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 discretion” standard as required by 37 C.F.R. § 42.71(c) for 

reviewing requests for rehearing. Corning Optical 

Commc’ns RF, LLC v. PPC Broadband, Inc., IPR2014-

00440, Paper 70 at 6 (P.T.A.B. Dec. 9, 2015). On rehearing the Board rejected this argument because the decision 

to terminate proceedings was predicated on a motion to 
8 MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE

Medtronic also argues that this case involves a constitutional issue because the Board “deprived Medtronic of 

due process” given its inconsistent application of the real 

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) operates to bar review of the Board’s reconsideration of 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 mandamus 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 noninstitution 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 to have this court hear its 

challenges to the Board’s decision.

 

dismiss filed by the patent owner, not a request for rehearing of the institution decision as of right pursuant to 

37 C.F.R. § 42.71(d). Corning, Paper 70 at 6. The 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). See GTNX, 789 F.3d at 1312–13.
MEDTRONIC, INC. v. ROBERT BOSCH HEALTHCARE 9

Panel rehearing is not granted in this case.