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

Bosch sued Cardiocom, alleging infringement of two patents. Cardiocom petitioned for inter partes review of those patents. The petitions were denied because Cardiocom failed to show a reasonable likelihood that any of the challenged claims was unpatentable. Medtronic (Cardiocom’s parent company) then filed petitions seeking inter partes review of the same patents, listing Medtronic as the sole real party in interest. Bosch argued that Medtronic had failed to name Cardiocom as a real party in interest as required by 35 U.S.C. 312(a)(2). The Patent Board granted additional discovery regarding Cardiocom’s status, then dismissed, “persuaded … that Medtronic [was] acting as a proxy for Cardiocom.” The Board cited evidence that Cardiocom was the defendant in the infringement suits, that Cardiocom had filed its own petitions for inter partes review, that Cardiocom communicated with Medtronic while Medtronic’s petitions were being prepared, and that Cardiocom paid some of the fees for preparing Medtronic’s petitions. In November 2015, the Federal Circuit dismissed Medtronic’s appeals for lack of jurisdiction and denied mandamus relief, but later recalled the mandate, following the Supreme Court’s 2016 Cuozzo decision. The court subsequently reaffirmed. The Board’s vacatur of its institution decisions and termination of the proceedings constitute decisions whether to institute inter partes review and are “final and nonappealable” under section 314(d). Nothing in Cuozzo is to the contrary. View "Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc." on Justia Law