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IP Alert: Federal Circuit Confirms Decision to Not Institute Covered Business Method Trial Is Not Appealable

June 18, 2015

On June 16, 2015, in GTNX, Inc. v. INTTRA, Inc., the Court of Appeals for the Federal Circuit considered for the first time whether the decision to institute a covered business method (CBM) trial is an appealable decision. The court held that it did not have jurisdiction to review such decisions and that review is not available under a writ of mandamus unless the petitioner shows a “clear and indisputable right” to having the trial proceed.

In the underlying proceeding, GTNX requested a CBM review by the U.S. Patent and Trademark Office (USPTO) of four INTTRA patents. The Patent Trial and Appeal Board (PTAB) of the USPTO originally instituted separate CBM trials on the four INTTRA patents. INTTRA later moved for reconsideration of the trial institution decision on the basis that GTNX’s parent company had, prior to the filing of GTNX’s petitions for CBM review, filed a lawsuit challenging the validity of the INTTRA patents in question. Although this motion came after the 14-day time limit to request reconsideration of the decision to institute trial by right, the PTAB granted the motion, vacating the decision to institute trial and instead entering a decision to not institute trial because the earlier lawsuit nullified the USPTO’s jurisdiction under 35 U.S.C. 325(a)(1). 

The Federal Circuit analogized this case to those of St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., and In re Cuozzo, which addressed the Federal Circuit’s jurisdiction to review a decision to institute an inter partes review. In those cases, the Federal Circuit found that it did not have jurisdiction to review such decisions, and the Federal Circuit held similarly for CBM proceedings.

The Federal Circuit also treated GTNX’s appeal as a request for mandamus relief. Under this approach to the jurisdictional question, the Federal Circuit held that GTNX failed to establish a “clear and indisputable right” to having the CBM trial proceed. Accordingly, the Federal Circuit denied the writ of mandamus.

Lastly, the Federal Circuit held that the Administrative Procedure Act, 5 U.S.C. 702, 704, does not confer jurisdiction on the Federal Circuit to review the decision to not institute trial against the four INTTRA patents.

This decision confirms that decisions to not institute a CBM trial are not appealable to the Federal Circuit, and that a writ of mandamus seeking to overcome such a decision must show that the petitioner has a clear and indisputable right to such a trial, which bar appears to be difficult to clear.

If you have questions regarding this case, please contact Fitch Even partner Nicholas T. Peters, author of this alert.


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