The Federal Circuit granted Intrra’s motion to dismiss GTNX’s appeal from the PTAB’s decision to reconsider its institution of GTNX’s “covered business patent” review proceedings and to vacate its institution decisions and terminate the proceedings.  GTNX’s parent corporation first filed a declaratory judgment action against Inttra and then GTNX petitioned the PTO to review the patents as covered-business-method patents.  Because 35 U.S.C. §325(a)(1) declares that “review may not be instituted . . . if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent,” Inttra filed a motion with the PTO to dismiss the covered business method review proceedings instituted by GTNX’s parent, which the PTO granted, thereby vacating its decision to institute the proceeding. 

GTNX appealed the PTO’s decision to the Federal Circuit.  Because §141 and §329 only authorize appeals to the Federal Circuit from the final written decision of the Board under §328(a) (with respect to the patentability of any patent claim challenged and any added new claim), the Federal Circuit granted Inttra’s motion to dismiss.  The court held that the PTO’s decision to vacate its institution of the review proceedings was the same as a decision to not institute the review, in which the Board made no decision with respect to the patentability of any claim, and therefore GTNX had no right to an appeal from such decision.  

GTNX, Inc. v. Inttra, Inc., Case Nos. 2015-1349, -1350, -1352, -1353 (June 16, 2015); Opinion by: Taranto, joined by Dyk and Chen; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board.  Read the full opinion here.

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