October 20, 2016

Congress Made a Rock So Heavy that the Courts Can’t Pick it Up

By Bryan K. Wheelock, Principal

In Medtronic, Inc. v. Robert BoschHealthcare Systems, Inc., [2015-1977, 2015-1986, 2015-1987] (October 20, 2016), the Court of Appeals for the Federal Circuit reaffirmed its earlier order that the PTAB’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).

A decision whether to institute inter partes review is “final and nonappealable” under 35 U.S.C. § 314(d).  The Supreme Court confirmed this in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), holding that §314(d) operates to bar review in cases where the challenge consists 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 Federal Circuit concluded that under Cuozzo a decision whether to institute inter partes review proceedings pursuant to §314(a) (the issue in Cuozzo) and a reconsideration of that decision (the current situation are both barred from review by § 314(d)).  The Federal Circuit said that It is difficult to conceive of a case more “closely related” to a decision to institute proceedings than a reconsideration of that very decision, adding that “[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.”

While Medtronic correctly pointed out that Cuozzo reserved the question of §314(d)’s effect on “appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’”  The Federal Circuit did not agree that these issues applied here.

Although the result seemed preordained by Cuozzo, one can relate to Medtronic’s incredulity that Congress can give decision making authority to a government agency, and then completely insulate that agency’s exercise of that authority from review by courts.