Gtnx, Inc. v. Inttra, Inc.
789 F.3d 1309
| Fed. Cir. | 2015Background
- GTNX petitioned the PTO to review four INTTRA patents as covered business method patents.
- The Board instituted four CBM reviews in August 2014 and later reconsidered, vacating the institution decisions and terminating proceedings.
- INTTRA moved to dismiss, arguing § 325(a)(1) barred review due to GTNX's prior civil action; GTNX argued waiver and timeliness.
- The Board relied on § 325(a)(1) as a jurisdictional bar and treated the action as a finalBoard decision.
- GTNX appealed under § 329 and § 141, while INTTRA moved to dismiss for lack of jurisdiction; GTNX alternatively sought mandamus via the All Writs Act.
- The Federal Circuit dismissed the appeal for lack of jurisdiction and denied mandamus relief, and rejected APA-based jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is GTNX’s appeal jurisdictionally proper under 35 U.S.C. §141(c) and §329? | GTNX asserts Board’s decision is appealable under §141(c). | INTTRA argues the decision is not a final patentability ruling and thus not within §141(c)/§329. | Appeal dismissed for lack of jurisdiction. |
| Is mandamus relief available to challenge a non-institutional Board decision? | GTNX contends mandamus to compel or review is appropriate. | INTTRA contends mandamus relief is unavailable due to lack of a clear right and statutory limits. | Mandamus relief denied. |
| Does the Administrative Procedure Act provide independent jurisdiction here? | GTNX invokes APA jurisdiction. | INTTRA argues APA is not a jurisdiction-conferring statute for this case. | APA does not confer jurisdiction; rejected. |
Key Cases Cited
- St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (distinguishes institution decisions from patentability decisions; supports limited appellate review)
- Cuozzo Speed Techs., Inc. v. Cuozzo, 778 F.3d 1271 (Fed. Cir. 2015) (institution challenges and limits on mandamus relief in CPT proceedings)
- In re Dominion Dealer Solutions, Inc., 749 F.3d 1379 (Fed. Cir. 2014) (absence of mandamus right to challenge non-institution decision)