Gtnx, Inc. v. Inttra, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
GTNX, INC.,
Appellant
v.
INTTRA, INC.,
Appellee
______________________
2015-1349, 2015-1350, 2015-1352, 2015-1353
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
CBM2014-00072, CBM2014-00073, CBM2014-00074,
CBM2014-00075.
______________________
Decided: June 16, 2015
______________________
BORIS F ELDMAN, Wilson, Sonsini, Goodrich & Rosati,
PC, Palo Alto, CA, for appellant. Also represented by
STEFANI E. SHANBERG, ROBIN L. BREWER, San Francisco,
CA; MICHAEL T. ROSATO, Seattle, WA; RICHARD T ORCZON,
Washington, DC; G IDEON A. SCHOR, New York, NY.
MICHAEL J OHN L YONS , Morgan, Lewis & Bockius LLP,
Palo Alto, CA, for appellee. Also represented by WALTER
SCOTT T ESTER, AHREN CHRISTIAN HSU-H OFFMAN, D AVID
VINCENT SANKER; T HOMAS M. P ETERSON, San Francisco,
CA.

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GTNX , INC. v. INTTRA, INC. 2
______________________
ON MOTION
______________________
Before D YK, T ARANTO, and CHEN, Circuit Judges.
T ARANTO, Circuit Judge.
At the request of GTNX, Inc., the Patent Trial and
Appeal Board instituted “covered business method pa-
tent” review proceedings for four patents owned by
INTTRA, Inc. A few months later, the Board reconsidered
its institution decisions, determined that institution of
proceedings in these matters violated a statutory pro-
scription, vacated the institution decisions, and terminat-
ed the proceedings. GTNX, Inc. v. INTTRA, Inc.,
CBM2014-00073 et al., 2014 WL 7723800 (PTAB Dec. 10,
2014). GTNX appeals, and INTTRA moves to dismiss the
appeal. We grant the motion. In addition, treating the
appeal in the alternative as a mandamus petition, we
deny mandamus relief.
BACKGROUND
A
In the Leahy-Smith America Invents Act, Pub. L. No.
112–29, § 18, 125 Stat. 284, 329-31 (2011), Congress
required the Patent and Trademark Office to establish a
“transitional post-grant review proceeding for review of
the validity of covered business method patents.”
§ 18(a)(1). Section 18(a)(1) states a general rule, subject
to exceptions not material here, that the PTO must “em-
ploy,” for such review, the “standards and procedures of[ ]
a post-grant review under chapter 32 of title 35,” i.e., 35
U.S.C. §§ 321–329.
Section 324 authorizes the Director of the PTO to in-
stitute post-grant review, but by regulation, the Director
has delegated to the Board the responsibility to make the

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GTNX , INC. v. INTTRA, INC. 3
institution determination. 37 C.F.R. §§ 42.4, 42.208. Of
relevance to this case, 35 U.S.C. § 325(a)(1) declares that
“review may not be instituted . . . if, before the date on
which the petition for such a review is filed, the petitioner
or real party in interest filed a civil action challenging the
validity of a claim of the patent.” And § 324(e) declares
that “[t]he determination by the Director whether to
institute a post-grant review under this section shall be
final and nonappealable.”
Once review has been instituted, the Board conducts
the post-grant review. § 326(c). “If a post-grant review is
instituted and not dismissed under this chapter,” the
Board “shall issue a final written decision with respect to
the patentability of any patent claim challenged by the
petitioner and any new claim added under section 326(d).”
§ 328(a). Section 329 authorizes a party dissatisfied with
the Board’s final written decision with respect to patenta-
bility to appeal to this court under 35 U.S.C. § 141(c), and
28 U.S.C. § 1295(a)(4)(A) grants this court jurisdiction
over such an appeal.
B
INTTRA owns four patents relating to online methods
for coordinating containerized shipping. In 2011, GT
Nexus, Inc., GTNX’s parent company, filed suit in the
United States District Court for the Northern District of
California, seeking a declaratory judgment that INTTRA’s
shipping methods patents were invalid. Several years
later, in early 2014, while the court case was pending,
GTNX petitioned the PTO to review the patents as cov-
ered-business-method patents. See GTNX, 2014 WL
7723800, at *1–2.
On August 12, 2014, the Board instituted review pro-
ceedings (four separate proceedings which the Board then
treated together). Id. at *1. In October 2014, however,
the Board granted INTTRA leave to file a motion to
dismiss the proceedings on the ground that § 325(a)(1)

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GTNX , INC. v. INTTRA, INC. 4
barred the reviews because of GTNX’s previously filed
civil action. Id. After INTTRA filed the authorized mo-
tion, GTNX opposed, arguing that INTTRA had waived
the § 325(a)(1) objection by not presenting it earlier,
either before institution or within the 14 days allowed by
the rule giving a right to seek reconsideration, 37 C.F.R.
§ 42.71(d). Id. at *2.
On December 10, 2014, the Board granted INTTRA’s
motion. It “vacated” the August 2014 institution decisions
and “terminated” the proceedings, id. at *1, *3, without
addressing any issues of patentability. The Board noted
that there was no dispute that GTNX’s declaratory-
judgment action fell within the terms of § 325(a)(1). Id. at
*2. And it concluded that § 325(a)(1) is a statutory limit
on Board “jurisdiction” that it could not and would not
decline to enforce just because INTTRA had not invoked it
earlier. Id.
Characterizing the ruling as a final written decision
under § 328, GTNX appeals under § 329, which provides
for appeals under § 141. INTTRA moves to dismiss.
D ISCUSSION
We agree with INTTRA that GTNX’s appeal falls out-
side 35 U.S.C. §§ 141 and 329 and hence outside this
court’s jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
By its terms, § 329 authorizes appeal, under § 141(c),
only from a “final written decision of the [Board] under
section 328(a).” Similarly, § 141(c), as relevant here,
authorizes appeal only from a “final written decision of
the [Board] under section . . . 328(a).” In turn, § 328(a)
refers only to “a final written decision with respect to the
patentability of any patent claim challenged by the peti-
tioner and any new claim added under section 326(d).” §
328(a) (emphasis added). Here, the Board made no deci-
sion “with respect to the patentability” of any claim. The

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GTNX , INC. v. INTTRA, INC. 5
Board decision at issue, therefore, is outside § 328(a) and,
hence, outside §§ 141(c) and 329.
In St. Jude Medical, Cardiology Division, Inc. v. Vol-
cano Corp., we dismissed an appeal from a non-institution
decision under chapter 31 of Title 35, which establishes a
regime for “inter partes review” of issued patents that is
materially the same as chapter 32 in the particular juris-
dictional respects relevant here. 749 F.3d 1373 (Fed. Cir.
2014). We explained the structural contrast between a
“determination . . . whether to institute” a proceeding,
which is “final and nonappealable,” 35 U.S.C. § 314(d),
and the “final written decision” determining patentability,
§ 318(a), and we held that the appeal authorization
there—§ 319, incorporating § 141(c)—was limited to the
final written decision on patentability. Id. at 1375–76.
We thus relied on chapter 31’s textually clear and com-
mon-sense distinction between a final Board decision that
reaches the patentability merits and an earlier decision
whether to institute. We concluded that 28 U.S.C.
§ 1295(a)(4)(A)’s grant of jurisdiction to this court to
review decisions of the Board “under title 35” is limited
“to the Board’s decision . . . on the merits of the . . . re-
view, after it ‘conducts’ the proceeding that the Director
has ‘instituted.’ ” Id. at 1376.
The same conclusion applies to this case under chap-
ter 32. The Board decision GTNX is seeking to appeal
was not reached after conduct of the review and did not
make a determination with respect to patentability. The
decision is therefore outside 35 U.S.C. §§ 141(c), 328(a),
329 and, in turn, outside 28 U.S.C. § 1295(a)(4)(A).
Confirming that the decision at issue is not a § 328(a)
decision—the only appealable decision within the statuto-
ry regime—is that the fair characterization of the decision
within the regime is as a decision whether to institute
proceedings. The Board expressly stated that it was
vacating the earlier decision to institute proceedings.

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GTNX , INC. v. INTTRA, INC. 6
Having reconsidered whether to institute the proceeding
here and determined not to do so based on § 325(a)(1), the
Board simultaneously “vacated” the institution decisions
and required termination of the proceedings. GTNX, 2014
WL 7723800, at *1, *3. It is strained to describe this as
anything but a “determination . . . whether to institute”
proceedings—statutory language that is not limited to an
initial determination to the exclusion of a determination
on reconsideration. § 324(e); see also § 324(c). The stat-
ute declares such a decision to be “final and nonappeala-
ble,” § 324(e), thus reinforcing the absence of appeal
jurisdiction in this court.
In its notice of appeal, GTNX invoked the All Writs
Act, 28 U.S.C. § 1651. Although in opposing the motion to
dismiss, GTNX does not invoke that provision, we may
treat the appeal as, in the alternative, a request for
mandamus relief under § 1651. See, e.g., In re Cuozzo
Speed Techs., Inc., 778 F.3d 1271, 1278 & n.5 (Fed. Cir.
2015). Doing so, we do not find mandamus relief to be
available.
In In re Dominion Dealer Solutions, Inc., 749 F.3d
1379, 1381 (Fed. Cir. 2014), which involved a requested
inter partes review, we relied on the statutory scheme to
conclude that the petitioner there could not invoke man-
damus to challenge a non-institution decision in this
court. We relied on the absence of a “ ‘clear and indisput-
able’ ” right to relief in this court, id. at 1381 (citation
omitted), a conclusion reflecting the careful statutory
limits on this court’s jurisdiction to review non-institution
decisions.
Moreover, in Cuozzo, where inter partes review had
been instituted, and the institution was challenged after a
final written decision, we found the particular asserted
limit on institution to fall short of constituting a clear and
indisputable bar on the Board’s action. 778 F.3d at 1278.
Here, too, it cannot be said that GTNX has a clear and

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GTNX , INC. v. INTTRA, INC. 7
indisputable right to have the proceeding continue, in the
face of the otherwise-applicable proscription of § 325(a)(1),
just because INTTRA did not raise this ground before the
initial institution decision was made or in a rehearing
request within 14 days under 37 C.F.R. § 42.71(d).
GTNX identifies nothing in the statute or regulations
that precludes the Board from reconsidering an initial
institution decision or invoking the § 325(a)(1) bar on its
own, let alone inviting the patentee to file a motion more
than 14 days after institution. In particular, 37 C.F.R.
§ 42.71(d)(1) restricts only rehearing requests made as of
right. It does not prohibit the PTO from allowing a party
to file a later request for rehearing from an institution
decision, as the Board did here. Moreover, as a general
matter, “administrative agencies possess inherent author-
ity to reconsider their decisions, subject to certain limita-
tions, regardless of whether they possess explicit
statutory authority to do so.” Tokyo Kikai Seisakusho,
Ltd. v. United States, 529 F.3d 1352, 1360 (Fed. Cir.
2008). We see nothing in the statute or regulations
applicable here that clearly deprives the Board of that
default authority.
We likewise see no clear bar on the Board’s treatment
of the § 325(a)(1) proscription as a “jurisdiction[al]” limit,
to be applied without invoking waiver based on the timing
of the patentee’s raising of the issue. GTNX, 2014 WL
7723800, at *2 (relying on La. Pub. Serv. Comm’n v. FCC,
476 U.S. 355, 374–75 (1986) (agency “may not confer
power upon itself” because “to expand its power in the
face of a congressional limitation on its jurisdiction would
be to grant to the agency power to override Congress”)).
In any event, GTNX cannot find a clear, indisputable
right to have the Board maintain the proceeding in the
circumstances present here. We conclude that mandamus
relief is unavailable.

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GTNX , INC. v. INTTRA, INC. 8
GTNX asserts jurisdiction here on one basis besides
35 U.S.C. §§ 141(c), 329 and 28 U.S.C. § 1295(a)(4)(A). It
invokes the Administrative Procedure Act, 5 U.S.C.
§§ 702, 704. “The APA, however, is not a jurisdiction-
conferring statute.” Trudeau v. Fed. Trade Comm’n, 456
F.3d 178, 183 (D.C. Cir. 2006); see Califano v. Sanders,
430 U.S. 99, 105–07 (1977). We therefore reject GTNX’s
invocation of the APA as a ground of jurisdiction. We
need not consider other questions raised by GTNX’s
invocation of the APA, such as whether the APA grants a
cause of action for a case brought only against a private
party, not against any federal-government actor, and,
even if so, whether review limitations within chapter 32 of
Title 35 would remove the case from APA coverage by
virtue of, e.g., 5 U.S.C. §§ 701(a), 702.
CONCLUSION
For the foregoing reasons, we dismiss the appeal and
deny mandamus relief.
APPEAL DISMISSED, MANDAMUS DENIED

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