Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. (Fed. Cir. 2016)

Federal Circuit Denies Petition for Rehearing in Medtronic v. Robert Bosch Healthcare Systems

By Kevin E. Noonan --

One of the aspects of inter partes review that differed from other post-grant review proceedings before the Board of Patent Appeals and Interferences (succeeded by the Patent Trial and Appeal Board) is a requirement for transparency with regard to the "real party in interest":  unlike in ex parte reexamination, for example, the inter partes review provisions of the Leahy-Smith America Invents Act require that a petition for inter partes review identify the real party in interest.  35 U.S.C. § 312(a)(2).  One basis for this requirement is that the statute also contains provisions for a time bar for filing an IPR, which without transparency regarding the RPI would permit a time-barred party to hide behind a strawman petitioner in contravention of the statute.  All of these considerations came into play in Medtronic v. Robert Bosch Healthcare Systems, in which a Federal Circuit panel denied Medtronic's Petition for Rehearing of its decision that it could not review the PTAB's discontinuance of IPR proceedings under 35 U.S.C. § 314(d).

The basis of Medtronic's petition is the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, which issued after the original panel decision.  The parties were involved in district court patent infringement litigation over U.S. Patent Nos. 7,769,605 and 7,870,249 owned by Bosch, and a Medtronic subsidiary (Cardiocom LLC) petitioned for IPR which was denied by the PTAB, for failure to show "a reasonable likelihood that any of the challenged claims was unpatentable on the grounds asserted."  Thereafter, Medtronic itself filed its own three petitions for review of the same patents and named Medtronic as the RPI.  Initially, the Board denied Bosch's motion that the petitions should be refused because Medtronic had not properly identified Cardiocom as the RPI; doing so would have implicated the time bar of § 315(b).  However, after permitting Bosch to seek additional discovery on the RPI identity, the Board granted Bosch's motions to dismiss, being "persuaded [by the collective evidence] that Medtronic [was] acting as a proxy for Cardiocom" (this evidence including 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 initial panel decision dismissed Medtronic's appeal of the Board's decision to discontinue the IPRs, based on its opinion that the statute prohibited Federal Circuit review of institution decisions (and decisions whether to continue an IPR once instituted).  Medtronic petitioned for rehearing and the Court withdrew its mandate in order to review its decision in view of the intervening Supreme Court's Cuozzo decision.  In denying Medtronic's petition for rehearing, the Court once again finds review precluded by § 314(d) of the statute.  Citing the Cuozzo opinion's language 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 panel held that a decision to institute an IPR and a decision whether to continue an IPR once instituted (which the panel calls "reconsideration") are both barred by the statute.  Citing  Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., No. 15- 1726, 2016 WL 5335500, at *6 (Fed. Cir. Sept. 23, 2016), the panel held that "[i]t is difficult to conceive of a case more 'closely related' to a decision to institute proceedings than a reconsideration of that very decision and "[i]t would be strange to hold that a decision to institute review would not be reviewable but a reconsideration of that decision would be reviewable."  Moreover, considering that the PTAB's decision was predicated on failure of the petitioner to comply with § 312(a)(2), the panel determined that the Board's decision to discontinue is "fairly characterized" as a decision whether to institute proceedings in the first place, thereby falling squarely within the ambit of  § 314(d).  And the panel cited Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 WL 4933298, at *4 (Fed. Cir. Sept. 16, 2016) (decided after Cuozzo) as involving institution questions in the context of a statutory bar (albeit involving assignor estoppel), wherein the opinion states that "[w]e rejected the same argument, now advanced by Medtronic, that the 'under this section' language of § 314(d) limits the bar on reviewability only to questions arising under § 314."

The opinion also recognized that the Supreme Court's Cuozzo opinion reserved constitutional questions (e.g., due process concerns) or that the PTO exceeded its statutory authority (e.g., deciding unpatentability for failure to satisfy § 112) from the scope of its decision regarding Federal Circuit unreviewability.  Regarding Medtronic's challenge under this latter reservation, the opinion relies on the Board's authority under § 318(a) to dismiss an IPR after it has been instituted as well as the principle that  "administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so," citing Tokyo Kikai Seisakusho, Ltd. v. United States, 529 F.3d 1352, 1360 (Fed. Cir. 2008).  And the panel saw no "colorable constitutional issue" that would invoke this reservation of the Supreme Court's Cuozzo opinion.

Finally, the panel found that Medtronic was not entitled to a writ of mandamus, insofar as its petition could be considered to request such a writ.

It is clear that the Federal Circuit believes Congress ceded institution decisions and all ancillary procedural questions to be within the unreviewable purview of the PTAB under the PTO's statutory authority and that the Supreme Court's Cuozzo decision indicates that the Court concurs.  While it is possible that Medtronic could ask the entire Court to grant en banc review, a more fruitful approach might be to have Congress change the law (if they can make a convincing argument that the Office has interpreted the statute contrary to its intentions).

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. (Fed. Cir. 2016)
Panel: Circuit Judges Lourie, Dyk, and Hughes
Opinion by Circuit Judge Dyk

Comments

[skeptical]

To your last paragraph, I am curious as to why you think that path (convincing Congress to change the law) would be more fruitful?

Do you really think the Voice of the People $howering down into the wallets of Congress (thank you Citizens United) has changed since the AIA? More likely, instead of bread, we will just see more circus.

The more powerful path (in my humble opinion) is to pursue the innate frailty of the IPR - which is only made more frail with the strengthening of the inability to place the separate institution decision (which results in a taking of sticks from the bundle of the granted property right - a taking by a politically controlled body that ALSO happens with no remuneration and substantially harms the property) in an Article III court to review that separate legal action of institution.

[Kevin E. Noonan]

Dear Skeptical: my recommendation was only in the context that the Court in Cuozzo made it clear that they believed Congress has spoken and that the constitutional and institutional integrity limitations were the only ones that could be used to get judicial review. I don't see that changing any time soon (just as I don't see the dysfunction in Congress changing either).

Thanks for the comment.

[skeptical]

Thanks Dr. Noonan - I did misunderstand your statement then. I thought that you were calling on Congress to make the change rather than your clarified view here that Congress would not make that change any time soon (unless of course, they had to for, say, the law that they wrote is found Unconstitutional).

[Scooby Don't]

Mike "While U.S. patents are granted and enforced by the U.S. Federal government, any acts that occur in accordance with a claimed invention are those of the patent owner or its licensee. To the extent that such an entity is a private party, any restriction to communication that might occur due to practicing claims like those of the '610 patent would not be that of the government."

Oh, please. You are contradicting yourself here. The government can't avoid a prior restraint problem merely by granting the right to enjoin public speech along to some private party. Patent infringement is strict liability.

When the government issues a patent claim to, e.g., "A method, comprising communicating information about a cancer correlation, wherein said communication uses a computer configured to request authorization before initiating said communication" that claim turns people engaging in protected speech into infringers. Nobody can tell me (or anyone else) that I can't communicate information about a cancer correlation (or any other fact) using prior art communication technology that I control (by virtue of owning it or renting it). That's why we have a First Amendment.

Now go ahead and tell everyone that "the PTO never grants patents like this." Or better yet: "this a 103 issue". That's a tried and true way of avoiding the subject.

[skeptical]

Your claim to "practicing protected speech" misses the issue, as the ability to practice ANY speech (protected or otherwise) outside of the ambit of the utility protected by the patent (novelty and non-obviousness presumed for this argument) remains every bit as possible as was there prior to the grant of the patent.