Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.

United States Court of Appeals, Federal Circuit

October 20, 2016

MEDTRONIC, INC., Appellant
v.
ROBERT BOSCH HEALTHCARE SYSTEMS, INC., Appellee

         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

          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 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 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 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 ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.