Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.
839 F.3d 1382
Fed. Cir.2016Background
- Bosch sued Cardiocom (Medtronic subsidiary) for patent infringement on two patents; Cardiocom had previously petitioned for IPR of those patents.
- Medtronic filed three IPR petitions naming itself as the sole real party in interest; Bosch argued Cardiocom was a real party in interest and sought discovery.
- The PTAB initially instituted IPRs for Medtronic’s petitions but, after additional discovery, vacated its institution decisions and terminated the proceedings, finding Medtronic acted as a proxy for Cardiocom.
- Medtronic appealed; this court initially dismissed for lack of jurisdiction under 35 U.S.C. § 314(d), then recalled the mandate after the Supreme Court’s Cuozzo decision and requested supplemental briefing.
- The panel reaffirmed dismissal: the PTAB’s vacatur and termination were reconsiderations of institution decisions and are “final and nonappealable” under § 314(d); Medtronic’s mandamus alternative was denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PTAB’s vacatur/termination after institution is appealable under 35 U.S.C. § 314(d) | Medtronic: Reconsideration exceeds PTAB authority and is reviewable; § 314(d) shouldn’t bar this review | Bosch: Reconsideration is a decision whether to institute and § 314(d) bars review | Held: Not appealable—vacatur/termination is a reconsideration of institution and barred by § 314(d) (Cuozzo controls) |
| Whether Cuozzo left open review for constitutional or broad statutory questions | Medtronic: Cuozzo reserves review for due-process or other broad statutory/extraterritorial questions | Bosch: No colorable constitutional claim here; this is a statutory § 312(a) disclosure issue closely tied to institution | Held: No colorable constitutional claim; Cuozzo’s carve-outs not triggered here |
| Whether PTAB exceeded inherent authority by vacating institution decisions | Medtronic: PTAB lacked authority to cancel instituted proceedings on non-merits grounds | Bosch: Agencies have inherent authority to reconsider decisions; GTNX supports PTAB authority | Held: PTAB had inherent authority; vacatur is within its power and is a nonappealable institution decision |
| Whether mandamus is appropriate as an alternative remedy | Medtronic: Requests mandamus to review PTAB action | Bosch: Statutory scheme precluding review undermines clear right to relief | Held: Mandamus denied; Medtronic lacks a clear and indisputable right given § 314(d) bar |
Key Cases Cited
- GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir.) (PTAB reconsideration of institution is nonappealable under § 314(d))
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (U.S. 2016) (§ 314(d) bars review of institution decisions and closely related questions)
- Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir.) (§ 314(d) bars review of certain time-bar/privity challenges)
- Tokyo Kikai Seisakusho, Ltd. v. United States, 529 F.3d 1352 (Fed. Cir.) (agencies have inherent authority to reconsider decisions)
- In re Dominion Dealer Solutions, LLC, 749 F.3d 1379 (Fed. Cir.) (denial of mandamus where statutory scheme precludes review)