Takeaway: Control of the “proxy” party is but one factor in determining real party-in-interest, not a requirement.

In its Decision, the Board denied Petitioner’s request for rehearing on its Decision Terminate the Proceedings and vacate the Decision on Institution. The Board had determined that Petitioner failed to identify Cardiocom, LLC as a real party-in-interest under 35 U.S.C. § 312(a)(2), and accordingly, the Board had terminated the proceeding and vacated its previous decision on institution.

The Board explained that the burden of showing that the Decision to terminate should be modified lies with Petitioner, and that Petitioner must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. Petitioner made six arguments, none of which were persuasive.

First, Petitioner argued the Decision is inconsistent with In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015). Specifically, Petitioner argued that based on Cuozzo, any defect under 35 U.S.C. § 312 (a) is “washed clean” by a decision instituting an inter partes review, which is final and cannot be vacated after institution. The Board did not believe Cuozzo is relevant to the issue in these proceedings, because it believed Cuozzo is relevant only to the scope of appellate review of institution decisions, not whether the Board can vacate an institution decision during the course of the inter partes review.

Second, Petitioner argued that it should be permitted to revise its Petitions to name Cardiocom now, without the Petitions being accorded a new filing date. The Board disagreed with this argument in its Decision to Terminate, and a request for rehearing is not an opportunity to reiterate arguments previously addressed.

Third, Petitioner argued that the Board erred in determining that it was acting as a “proxy” for Cardiocom, because the Board ignored Petitioner’s evidence on the issue. However, the Board reviewed and evaluated the evidence when it made its Decision to Terminate.

Fourth, Petitioner argued that the Board misapplied legal precedent in determining that a non-party “proxy” can be a real party-in-interest, without a showing that the non-party exercised control over the name party. The Board was not persuaded and reiterated that control is but one factor in the assessment of the totality of the circumstances.

Fifth, Petitioner argued that the Board misapprehended the significance of some of the evidence and facts surrounding the two proceedings, but the Board disagreed. Accordingly, the Board found that Petitioner had failed to carry its burden of demonstrating that the Board misapprehended or overlooked anything in the Decision granting Patent Owner’s Motion to Terminate.

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488; IPR2014-00607
Paper 59: Decision on Petitioner’s Request for Rehearing of Decision to Terminate the Proceeding and vacate the Decision on Institution
Dated: May 22, 2015
Patents: 7,769,605 B2; 7,870,249 B2
Before: Stephen C. Siu, Justin T. Arbes, and Miriam L. Quinn
Written by: Arbes