One of the aspects of inter partes review that differed from other post-grant review proceedings before the Board of Patent Appeals and Interferences (succeeded by the Patent Trial and Appeal Board) is a requirement for transparency with regard to the "real party in interest": unlike in ex parte reexamination, for example, the inter partes review provisions of the Leahy-Smith America Invents Act require that a petition for inter partes review identify the real party in interest. 35 U.S.C. § 312(a)(2). One basis for this requirement is that the statute also contains provisions for a time bar for filing an IPR, which without transparency regarding the RPI would permit a time-barred party to hide behind a strawman petitioner in contravention of the statute. All of these considerations came into play in Medtronic v. Robert Bosch Healthcare Systems, in which a Federal Circuit panel denied Medtronic's Petition for Rehearing of its decision that it could not review the PTAB's discontinuance of IPR proceedings under 35 U.S.C. § 314(d).
The basis of Medtronic's petition is the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, which issued after the original panel decision. The parties were involved in district court patent infringement litigation over U.S. Patent Nos. 7,769,605 and 7,870,249 owned by Bosch, and a Medtronic subsidiary (Cardiocom LLC) petitioned for IPR which was denied by the PTAB, for failure to show "a reasonable likelihood that any of the challenged claims was unpatentable on the grounds asserted." Thereafter, Medtronic itself filed its own three petitions for review of the same patents and named Medtronic as the RPI. Initially, the Board denied Bosch's motion that the petitions should be refused because Medtronic had not properly identified Cardiocom as the RPI; doing so would have implicated the time bar of § 314(d). However, after permitting Bosch to seek additional discovery on the RPI identity, the Board granted Bosch's motions to dismiss, being "persuaded [by the collective evidence] that Medtronic [was] acting as a proxy for Cardiocom" (this evidence including 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 initial Board decision dismissed Medtronic's appeal of the Board's decision to discontinue the IPRs, based on its opinion that the statute prohibited Federal Circuit review of institution decisions (and decisions...
