GTNX, Inc.. v. INTTRA, Inc., No. 15-1349 (Fed. Cir. 2015)Annotate this Case
INTTRA owns patents relating to online methods for coordinating containerized shipping. GT sought a declaratory judgment that INTTRA’s shipping methods patents were invalid. While the case was pending, GT petitioned the PTO to review the patents as covered-business-method patents. The Patent Trial and Appeal Board instituted review, but granted INTTRA leave to file a motion to dismiss on the ground that section 325(a)(1) barred the reviews because of the civil action. GT argued that INTTRA had waived that objection by not presenting it within the 14 days allowed by the rule giving a right to seek reconsideration. The Board granted INTTRA’s motion and “terminated” proceedings, without addressing patentability, reasoning that section 325(a)(1) is a statutory limit on Board “jurisdiction.” The Federal Circuit dismissed and denied mandamus relief. The Leahy-Smith America Invents Act, 35 U.S.C. 325 declares that “review may not be instituted . . . if, before the date on which the petition for such a review is filed, the petitioner … filed a civil action challenging the validity of a claim of the patent.” GT identified nothing that precludes the Board from reconsidering an initial institution decision or invoking the 325(a)(1) bar on its own, or inviting the patentee to file a motion after more than 14 days.