February 1, 2016

APA Review of IPR Decisions to Institute Proving to be a Dead-end

The recent ruling in Medtronic v. Lee, No. 1-15-cv-946 (E.D. Va. Jan. 21, 2016) clarifies certain important questions about whether APA review is available when a petitioner is dissatisfied with the PTAB institution decision. Perhaps not surprisingly, in view of Federal Circuit jurisprudence on judicial review of PTAB institution decisions, the answer in Medtronic is “no.”

This case involves a disappointed IPR petitioner suing Michelle Lee in her capacity as PTO director in the Eastern District of Virginia. The background to this suit began when Robert Bosch Healthcare Systems (RBHS) sued Cardiocom for patent infringement. Cardiocom responded by petitioning for IPR of RBHS’s patents. The petition was eventually denied, but after it was filed and before it was denied, Medtronic acquired Cardiocom as a wholly owned subsidiary. More than one year after RBHS filed suit, Medtronic filed a second IPR petition in its own name, not naming Cardiocom as a real-party-in-interest. The PTAB granted this petition. RBHS requested reconsideration, however, based on the one-year time bar and Medtronic’s connections to Cardiocom. The PTAB reversed itself on reconsideration and dismissed the Medtronic petition.

It has already been well-established that a party dissatisfied with the PTAB’s refusal to institute cannot seek appellate review in the Federal Circuit. St. Jude Medical v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014). Instead of wasting its time trying to convince the Federal Circuit to go against St. Jude, Medtronic instead sought review in the Eastern District of Virginia under the Administrative Procedures Act (APA), on the grounds that the PTAB’s decision to dismiss was arbitrary and capricious, or otherwise contrary to law. 5 U.S.C. §§ 702 & 704. The question of whether one can use the APA to get review of PTAB institution decisions is still open. GTNX Inc. v. INTTRA Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). However, the Medtronic court reads 35 U.S.C. § 314(d) as completely stripping courts of any authority to review institution decisions, even review under the APA. While the Eastern District of Virginia is not necessarily the last word on this subject (especially in view of the recent certiorari for In re Cuozzo Speed Tech.), it does suggest that APA review will be no more availing than any previous efforts to seek review of a PTAB decision to institute or not institute.