by Dennis Crouch
On rehearing in Medtronic v. Robert Bosch, the Federal Circuit panel has reaffirmed its earlier determining that the PTAB’s vacatur of an IPR institution decision is a decision as to “whether to institute an inter partes review” and therefore is “final and nonappealable.” The original Medtronic decision had been released prior to Cuozzo v. Lee (2016) and the rehearing decision now explains that “nothing in Cuozzo is to the contrary.”
Although I continue to cringe at the prospect of no appeal, the decision here makes logical sense based upon the statutory and procedural structure. Here, the termination decision was based upon the petitioner’s failure to identify all real parties at interest — a core requirement of a complete petition. Base upon that failure, the Board determined that the petitions were incomplete and therefore “cannot be considered.” With that conclusion, the Board terminated the petitions and vacated the prior institution decisions. In this framework, it makes sense for the termination/vacatur to be a decision on institution and thus not subject to appeal. I could imagine a different scenario where the PTAB terminates an IPR based upon some other ground that is not a petition requirement — such as failure to prosecute or improper post-institution attorney conduct. In that hypothetical situation, the termination would be substantially divorced from the institution and – in my view – would no longer fall under the no-appeal requirement.
An additional difficulty with all of this stems from the pending Ethicon petition and the difference between action by the Director and action by the PTAB. The statute separates the roles – indicating that the PTO Director’s role is in determining “whether to institute” an IPR. Under the statute, the PTAB then steps in to conduct the trial. Those separate roles were then combined by PTO regulation which states “The Board institutes the trial on behalf of the Director.” 37 CFR 42.4. A question – unanswered in this case – is whether the Director’s regulatory delegation above should be interpreted to also extend to vacating and terminating petitions. I’m not sure that it does.