The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue of whether termination of instituted inter partes review (“IPR”) proceedings based on a failure to meet the statutory filing requirements for a petition (namely, to identify all real parties-in-interest) would be barred from review by 35 U.S.C. § 314(d). The Court found that Cuozzo did not disturb Federal Circuit precedent as to the § 314(d) bar on review for reconsiderations of institution decisions.

For now, only time will tell if aggrieved parties will have more avenues to seek relief from the Board’s institution decision in the future.[1] Apple Inc. v. Fintiv, Inc., No. IPR2020-00019 (P.T.A.B. Mar. 20, 2020); Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). [2] Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1368 (2020) (citing Cuozzo, 136 S. Ct. at 2141).

[14] Id.(citing Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2141 (2016)). [15] Id.

2Uniloc 2017, LLC v. Facebook, Inc., Case No. 19-1688, Slip Op. (Fed. Cir. March 9, 2021). 3Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016). 4See Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020) (PTAB decisions under § 315(b), which bars petitions against patents where the petitioner or an RPI were sued in district court based on the same patents more than one year before filing the petition, are not reviewable); SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (PTAB decisions to limit the number of claims instituted are reviewable); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016) (PTAB decisions under § 312(a)(3), which requires that a petition identify invalidity grounds with particularity, are not reviewable); Facebook, Inc. v. Windy City Innovations, Inc., 973 F.3d 1321 (Fed. Cir. 2020) (PTAB decisions relating to joinder under § 315(c) are reviewable); ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020) (PTAB decisions not to terminate a proceeding despite a party’s allegation that its opponent failed to name all RPIs under § 312(a)(2) are not reviewable); Credit

35 U.S.C. §315(b). 35 U.S.C. § 314(d).Thryv, Inc., No. 18-916 at 2.Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131, 2137 (2016).Thryv, Inc., No. 18-916 at 7, citing Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016).Id.Id. at 9.Id.Id.SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Justice Gorsuch pushed back with the presumption of judicial review.Justice Ginsburg then turned to a point that many of the Justices were grappling with – language in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), that limited the Court’s earlier decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), to finding “that § 314(d) precludes judicial review only of the Director’s ‘initial determination’ under § 314(a) that ‘there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted.’” SAS 138 S. Ct. at 1359 (citing Cuozzo, 136 S. Ct. at 2140) (emphasis added).

Indeed, the U.S. Supreme Court in Cuozzo Speed Techs., LLC v. Lee held that it was specifically the patent owner’s opportunity to amend (or substitute) claims that justified the PTAB’s use of the broadest reasonable interpretation claim construction standard. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016).Part II The PTO’s Oct. 11 final rule change creates a potential new source of disharmony regarding the examination of new patent claims: While patent examiners at the PTO will construe new claims submitted in patent applications using the broadest reasonable interpretation standard, the PTAB will construe new “substitute claims” submitted in motions to amend using the more narrow Phillips standard.

2018) (en banc in relevant part). Click-to-Call has a bit of a tortured procedural history—the appeal was noticed in 2014, dismissed by a Federal Circuit panel for lack of jurisdiction in 2015, sent back for reconsideration by the U.S. Supreme Court in 2016 in light of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), and then again decided by the three-judge panel in 2018—but with one aspect of the case decided by the en banc Federal Circuit. In the part of the case decided by the en banc court, the Federal Circuit divided 10-2 on the question of whether a voluntary dismissal without prejudice of a district court litigation resets the one-year time bar under 35 U.S.C. § 315(b) for filing an IPR petition on the asserted patent.

Cisco challenged institution of the IPR on assignor estoppel grounds but the Board instituted the IPR in the face of this challenge. Accordingly, the first question the panel addressed was whether the decision to institute (and reject Cisco's assertion that the IPR should be barred under assignor estoppel) could be review by the Court under 35 U.S.C. § 314(d) as interpreted by the Supreme Court in Cuozzo Speed Technologies v. Lee, 136 S. Ct. 2131 (2016), and the Federal Circuit's application of this precedent in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc).

" This argument was rejected by the Supreme Court in its SAS decision and were relevant to the Court in its reasoning in support of that decision, according to the brief. Finally, the Tribe's brief argues that neither Oil States Energy Services v. Greene's Energy Group, LLC, 138 S. Ct. 1365 (2018), nor Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016), supports the panel's reasoning. The brief cites language in Oil States concluding that IPRs use "court-like procedures" before "an adjudicatory body" composed of "judges" and include "some of the features of adversarial litigation," Id.