Thursday, October 20, 2016

The CAFC discusses 35 U.S.C. § 314(d) in Medtronic v. Bosch: institution decisions still final and nonappealable

The bottom line outcome was "final and nonappealable" even after Cuozzo:

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.

The problem here was NOT naming the 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.

Footnote 1:

If Cardiocom were a real party in interest, the petition
would be time-barred under 35 U.S.C. § 315(b).


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