from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00488, IPR2014-00607,
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,
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.
LOURIE, Dyk, and HUGHES, Circuit Judges.
Inc. ("Medtronic") has filed a petition for
rehearing. Robert Bosch Healthcare Systems, Inc.
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.
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.
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.
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. 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.
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 ...